A guide on registering a trademark

Registering a trademark for your business may seem like an unnecessary hassle. However, if you leave your business name or assets unregistered, you risk it being used by counterfeiters, which subsequently can take your share in the market. Trademarks provide essential legal protection, so knowing how to trademark a name in the UK is a vital step in securing your business.

In a business, a trademark is a valuable asset. Once you have registered, you can use the ® symbol to show that your brand and logo are protected against copywriting. Registered trademarks can be sold, traded, and even used as security on loans and mortgages. If you trademark your business name, you can also license it to other businesses. For example, setting up a franchise. You can rely on the trademark to prevent other companies from imitating your brand, services, or products.

You should know exactly what counts as a trademark. You cannot be too literal or descriptive when looking to trademark a name. Names that describe the goods or service, or that are a characteristic are not allowed. For example, you cannot register the word ‘solicitor’ for a solicitor’s firm.

A good idea is to identify the elements of your brand that are unique to you. These can be a combination of words, logos, symbols, colours, and images. You can even trademark a sound, such as your company jingle.

Your trademark must be unique so regular names can be tricky. Consider using a made-up name when thinking of your business name. Brands such as Nike, Microsoft, and Kodak are all fictional names that allowed each to be successfully established as a unique, trademarked business name.

Step 1 – Research – Conduct a UK trademark search

The first step in applying to trademark a name in the UK is to check whether existing or similar trademarks exist. We can help you conduct a thorough search of existing and expired trademarks in the UK. If a trademark search reveals an existing or similar trademark to the one you wish to register you have a few options:

Check the trademark class – If a trademark has been registered in one class and your business is operating in a different class, you might be able to trademark your name in a different class to the existing registered trademark.

Check the trademark use – Once a trademark is registered, it must be used commercially. If a trademark has not been used for five years or more or is listed as expired, you can seek to have the existing trademark cancelled and then register your own trademark.

Seek permission to use the trademark – The UK Intellectual Property Office’s (UKIPO) database includes details of who owns a particular trademark. Write to the owner asking permission to use the trademark. They may permit you or agree to license its use for a fee.

Change your trademark – Explore if changing the colours, style, and design of the mark is enough to differentiate it. Infringing a trademark risks your entire business. If you cannot register what you have, it is best to go back to the drawing board and rebrand rather than risk future legal action. We can discuss all this with you.

Step 2 – Choose the right trademark class

Registering a trademark involves choosing the class of goods and services that you want the trademark to cover. Overall, there are 45 different trademark classes: 34 cover goods and products and 11 cover services. Each class covers different industries and products. Each class lists in detail what is included and – importantly – what is excluded from each class. This is called the NICE classification and you can review the full class list at the World Intellectual Property Organisation.

You must pick the relevant class for your business when you trademark a name. A trademark is registered to a specific class, meaning different businesses can register the same trademark in different classes. Each business must restrict the use of its respective trademark to the class it is registered in.

Step 3 – Deal with existing trademarks or objections.

A trademark application cannot be concluded until all objections are resolved. If there are no objections to your trademark, or all objectives are resolved, the trademark will then be registered within two weeks of the end of the publication period.

If someone objects to your trademark application, the UKIPO will try to resolve the issue. You can either withdraw the application, defend the application, or directly resolve the issue with the person objecting. We can advise of which of the following courses of action you can take.

It is worth knowing that even if you successfully register a trademark, it can still be challenged and declared invalid. Objections can come from a business trying to register a similar trademark, or a rival business adopting a wait-and-see approach to see how you are going to use your trademark.

If you own a business and need help navigating the complicated laws around registering a trademark or any other commercial entity, get in touch with one of our Commercial Solicitors. Find out more about our commercial law services here, or call us on 023 8023 4433 to get started. 

Disclaimer: Please be aware that nothing in this article constitutes legal advice on which you should rely. This article is published for general information only and professional legal advice should always be sought before taking any action related to or relying on the content of this article. Our Terms apply to this article.