[UK]How are trademarks around the world are obtained?
July 20, 2018
Obtaining a trade mark may seem like a complicated and drawn out process. At BKIP, we aim to de-mystify the process and give you an insight into how a trademark is actually registered
To begin with, a trademark must be registered with the United Kingdom Intellectual Property Office based in Newport. The logo, word or subject of the copyright must clearly be entered, along with which class you want to obtain a trademark under. There are numerous classes, and BKIP will help you understand which class you need to file under, as not registering under the right amount will not provide the protection it deserves, whereas too many could easily make the trademark void and rejected.
Once filed, the trademark will then be allocated under the watchful eye of an examiner, who will determine whether the trademark can be registered. For standard trademarks such as words and logos this should present little difficulties, especially if a detailed search of other trademarks has been carried out. As a guide, the examiner will usually make a decision within a month, dependent on caseloads.
After the trademark has been approved by the examiner, it will then be published in the weekly “trademark journal” for a period of two months. This is the most crucial period for a trademark, as it is this stage any opposition may be mounted. The United Kingdom Intellectual Property Office will first notify owners of any existing trademarks which may be similar and allow them to oppose your mark. During the two months that the trademark is awaiting registration in the trademark journal, anyone can oppose the trademark if they feel that the trademark is too similar to theirs. This highlights the need for trademark owners to view the Trademark journal regularly or risk losing their trademark, a service which BKIP can provide for clients once registered, or clients with existing trademarks.
If there has been any opposition to the trademark, the UK IPO will make a decision whether the new trademark actually does infringe an existing trademark and thus refuse the application if it does, or dismiss the opposition if it does now.
Following the end of the two month publication period in the journal, if there has been no successful opposition, then the new trademark has been registered. Certifications of proof will be then sent out, and the trademark will be in effect. It is recommended that as soon as certificates are received, then the trademark is used, as a trademark not being used will be regarded as “dormant” and thus potentially taken off the register