How to register a trademark in the UK: the key principles and a six-step application guide

Registering a trademark in the UK is something you can do yourself through the Intellectual Property Office (IPO), provided you understand a few principles first and work through the application in the right order. This guide is in two parts: the principles that matter when it comes to trademarks, and then a step-by-step process for registering one, with a free set of documents and templates to go with it. It ends with a tip on how to protect the trademark properly once it is registered.

What is a trademark?

A trademark, put simply, is a mark that is used in trade. A brand name is the obvious example: the name of a well-known soft drink is a trademark because that name is used when selling the product. The mark identifies your goods or services as yours, so that customers know who they are buying from. It can be a name, but the same principle applies to a logo or another distinctive sign you use when trading.

Trade mark vs trademark: terminology

You will see both spellings. Put simply, a trade mark, as two words, is a mark used in trade that has not been registered yet. A trademark, spelled as one word, is a trademark that has actually been registered. In practice people use the two interchangeably, but the distinction between an unregistered mark and a registered one is the point that matters. An unregistered mark is still a mark you use in trade; registration is what gives you the formal, recorded right to it.

TM vs R symbol: what's the difference?

You will also have seen the R and TM symbols used online. R stands for registered, and TM stands for trade mark.

• R can only be used when you have actually registered your trademark.
• TM can pretty much always be used, so long as it is a mark you are using in your trade.

So if you have not registered yet, you can use TM, but not R. Using R on a mark that is not registered is a mistake I see fairly often, and it is one to avoid.

What is a trademark class?

The last thing to understand before applying is classes. When you register a trademark, you need to select which classes apply to it. A class is pretty much like an industry.

For example, I registered my practice's name as a trademark against classes covering the legal industry, because that is the industry the name is used in. I would not register it for beverages, because the name is not used in connection with anything you drink. Your protection applies within the classes you choose, so pick the ones that genuinely cover what you sell. Two businesses can hold the same name as a trademark in different classes, which is why the class system matters so much at the search stage later on.

How to register a trademark: step by step

With the principles covered, here is the process. There are six steps, and the free documents that go with this guide include a checklist for the first of them. I would do them in this order: the checks in steps 2 to 4 come before the application itself, because they tell you whether applying is worthwhile.

• Step 1: gather the necessary details. Use the checklist (document A) to collect the information the application will ask for. It is a short list covering the owner of the mark, the mark itself and what it will be used for, and once you have everything on it you are ready to start. Doing this first means you are not hunting for details halfway through the online form.
• Step 2: check the UK IPO criteria. Confirm that your trademark meets the criteria for something that can actually be registered with the UK IPO. Not every name or sign qualifies. The IPO publishes what you can and cannot register, and it is worth reading before you go any further, because an application that fails the basic criteria is wasted money.
• Step 3: choose your trademark classes. On the IPO's website, search UK trademark classes and enter the word or phrase that is relevant to your product or service. The search shows you which classes are relevant for you. Try a few different words that describe what you do, because the right class is not always the first one that comes up.
• Step 4: search the trademark register. Check that your trademark has not already been registered by someone else for the same classes. On the IPO's website, search for the words that are relevant to you and look at what comes back, paying attention to the classes each existing mark is registered in.
• Step 5: start the application. Visit the IPO's website and click on apply online. This takes you into the official application process.
• Step 6: complete the questionnaire. Work through the online form, entering the details you gathered in step 1, the classes you chose in step 3 and the mark itself, then submit the application.

Searching the register: similar marks in other classes

Step 4 deserves a closer look, because people often give up too early when they find their name already on the register. Even if there is already a registered trademark that is very similar, or even identical, to yours, that does not necessarily mean you cannot register your own. What matters is whether the existing trademark, owned by someone else, is in a different class from yours.

So if your name is already registered by a business in an unrelated industry, you may still be able to register it in your own classes. If the existing registration is in the same class as yours, that is a real problem and you should get advice before applying. Spending a little time on this search can save you the application fee and the two-month wait, only to face an objection you could have predicted.

Apply online and the opposition period

Once you have submitted your application, the IPO analyses it to make sure it is suitable to be registered as a trademark. If it is, the application is published in the IPO journal, where it stays for two months. During that period anyone can object to your application, which is typically where a business with a similar existing mark in the same class would raise a challenge. This is the reason step 4 matters: a proper search before you apply tells you in advance whether an objection is likely.

If nobody objects and the two months pass, you have successfully registered a trademark, and from that point you can use the R symbol with it. If you want to see exactly what the online form looks like for a name and logo, including series marks, classes and fees, I walk through it screen by screen in how to trademark a name and logo in the UK.

Protect your trademark with a group structure

Registering the mark is not the end of protecting it. There is one more step that I recommend to clients once the registration has come through. Once it is registered, think about which company owns it and whether that is the right place for it to sit. A group structure, with the trademark held separately from the trading business, is a way to protect intellectual property like trademarks from the risks the trading company carries. That is a separate topic, but it is worth planning for as soon as the registration comes through, because the brand is often one of the most valuable things a business owns.

Next steps

Gather your details, check the IPO criteria, identify your classes and search the register before you spend anything on an application. Then apply online, complete the questionnaire and diarise the two-month opposition period so you know when the registration should come through. If the register search turns up a similar mark in your class, or you are unsure which classes to choose, speak to a solicitor before you submit.