Registered Trade Marks

Registration can effectively protect a trade mark (name, logo, trading style, distinctive part of a domain or company name, brand, image) indefinitely. In the UK and most other countries registration can be obtained on the basis of an "intention to use". In a few countries, notably Canada and the US (if an application is not based on an earlier overseas registration), use is required before registration is allowed. In most countries, however, non-use of a mark renders a registration liable to cancellation, sometimes automatically.

Ordinarily, a trade mark will be registered and used by a trader who provides the relevant goods and services in a particular jurisdiction.

In the UK it is possible for a non-trading association to register a Certification mark for use by any business (but not the certifying association itself) whose goods and/or services meet the applicable standards or conditions laid down in regulations specified by the non-trading association and approved by the Trade Marks Registry for such use.

A trade association may also register a Collective mark for use only by members of the association. Use of a Collective mark may be, but need not be, subject to regulations specifying particular standards or conditions for the relevant goods and/or services. The association owning a Collective mark may use such a Collective mark itself.

UK law further allows registration on the basis of a single application for a series of similar variants of a mark (provided the variants do not differ significantly). Typically acceptable variants may be word marks in stylised fonts, or with alternative descriptive text (e.g. XYZ home, XYZ life etc. for insurance services), or logo marks in colour and in black and white. Among the advantages of a series registration are that legitimate use of any one of the variants in the series will validate the registration for all, and confusingly similar variations can be explicitly included in a registration in anticipation of likely forms of infringement.

Advantages: Relatively cheap to maintain (renewal fees generally only every ten years); can protect a trade mark before it has been used; can protect a complete market, rather than a region or town; international registration systems available; enforcement relatively straightforward; criminal punishment of infringers available; Customs seizure of infringing goods available

Disadvantages: Protection must be applied for in the relevant Trade Mark Office(s); registration is not guaranteed (applications are generally examined and can be refused; registered trade marks can be challenged); it is necessary to apply for registration in respect of specified goods and/or services, which are divided into particular categories (known as Classes), for which the mark is (intended to be) used - registration is usually by Class, and the more Classes specified, the higher the costs.

Costs: UK: budget £800-£1000 plus VAT (for a single Class application) spread over 6-12 months unless a particularly complex examination is encountered or another party opposes registration

Community Trade Mark: budget £2500-£3000 plus VAT (for up to three Classes in a single application) spread over 18-24 months unless a particularly complex examination is encountered or another party opposes registration

Overseas: Costs vary from country to country, but for a single Class application a budget of between £1000-2000 would be adequate in most cases, but costs in the US and Japan, in particular, and in some other countries can be considerably higher. Ask us for information on specific countries of interest.

Marking: Before completion of the registration procedure: TM (or SM) and/or "(mark) is a trade mark of (owner's name)"
After completion of the registration procedure: ® and/or "(mark) is a registered trade mark of (owner's name)"