Trade Mark Searches & Registration

What is a trade mark?
A trade mark is usually a word or logo or a combination of both, used to distinguish the product or service of a particular trader. Registering a trade mark can be essential to protect existing goodwill and reputation, or when creating a new image or a new product or service.

The definition of a trade mark for the purposes of the Trade Marks Act 1994 is any mark which:
(a) can distinguish between the goods and services of one trader from the goods or services of another, and
(b) can be represented graphically.

Which words cannot be used?
A trade mark must be distinctive. It must not just be a description of the goods or services covered by the application, nor must it be a word which another trade may legitimately wish to use in connection with their own goods or services, for example, one could not register 'sharp' for knives.
Similarly a device or logo which happens to be common to a particular trade would not be registered as a trade mark . For example a barber's pole would not be registered in connection with hairdressing services.
Also, it is not possible to register a mark which is very similar to an existing mark, as this could lead to confusion, or one which is deceptive or suggests connection with the Royal family or uses the union jack or other official flags or symbols.

Why carry out a trade mark search?
A trade mark search is carried out to discover whether a proposed name or logo is already registered. The registration of a trade mark means that the owner has the right under the Trade Marks Act to enforce the exclusive use of the mark in respect of the class of goods or services in respect of which it is registered. This entitles the owner to take action for infringement against anybody who makes use of the same or a confusingly similar mark for the same or similar products.

A trade mark search can be carried out even if there is no intention to register a trade mark and is often done when a new company is formed. When a limited company is formed a search is always carried out to check that the proposed name is not already registered with the Registrar of Companies. However, the proposed company name may be the same or very similar to a registered trade mark. A trade mark search gives a broader picture of words and logos already registered. This may prevent unintentional infringement of an existing mark and the possible consequences of being sued, or having to abandon a company, business, or brand name, with all the inconvenience and expense this might entail.

Why register a trade mark?
Subject to any earlier rights which may be established, registration of a trade mark gives the owner a right to exclusive use of the mark in respect of the goods or services registered. The owner can sue for infringement of his registration if someone else uses the same or a similar mark on the same or similar goods or services. Large sums of money may be spent on designing and advertising a particular product and mark. Unauthorised use of that mark may mean the rightful owner losing business and goodwill.

If the trade mark is not registered then one may seek redress through the courts under common law in a "passing off" action. This is a much more complicated procedure. Firstly, the owner must establish that the mark is associated with his goods or services in the mind of the public. He must then persuade the court that the mark used by the other party is likely to cause the public to assume that the goods and services of the other party could be mistaken or associated with those of the owner, and that this will cause damage to his trade.

If, however, the mark is a registered trade mark it is a much simpler action. To sue for infringement under the Trade Marks Act the owner only has to show that someone else has used a mark the same as or similar to that of the owner's in connection with goods or services that are the same or similar. If a successful action is brought, the owner of the mark may be entitled to damages, an injunction to stop the unauthorised use of the mark and the distribution of goods which infringe the mark and/or a claim to the profits made by its infringement.
In certain circumstances the deliberate use of a registered trade mark on goods, by another person and without the owner's knowledge, may be classed as counterfeiting. This is a criminal offence.
The identity of a business and its brand name are important assets. When a business is sold, the fact that its name, and any brand names it uses, are registered as trade marks, can be important to reassure the purchaser that these important assets are protected. Indeed, a valuable trade mark and the rights under it can, in some cases, be sold as separate, identifiable assets.

Who may register a trade mark?
Any trade mark owner, whether a British subject or not. The mark must be used or proposed to be used in the United Kingdom.

Can a trade mark be registered in other countries?
Yes. A European Community trade mark can be registered at the office for harmonisation of the Internal Market in Alicante. This will provide protection in all 15 countries of the European Union including the UK. If trade mark protection is required in more than half of the countries of the European Community, registration of the Community Trade Mark may be the cheaper and most effective option, giving protection throughout the EU. The difficulty, however, is that if the mark is found unacceptable in one EU country, then the application will be refused completely.

A trade mark can also be registered in other countries both within and outside the European Union. In most countries the procedure and classification of goods and products are similar to those in the UK, though the registration procedures and costs vary from country to country.

How do I register a trade mark?
Obtaining full registration of a trade mark takes several months even in the most straightforward cases, though as soon as the application is made priority will be preserved against any later applicants. An outline of the procedure is a follows:

The first stage is usually to undertake a full search to assess the registrability of the proposed mark, especially if a logo is involved. This will look at any registered, lapsed and pending trade marks which are similar in any way. If there is some doubt as to the registrability of the trade mark advice can be sought from the Registrar. A full description of the goods and/or services will be required.

For the application itself, the information required will be the name and address of the proprietor of the trade mark, a full description of the goods or services and full details of the proposed mark, including camera-ready copy of the logo, if there is one.

An application to register a trade mark can take between 6 to 12 months to be completed by the Registry. If no objections are raised during examination, the application may proceed to publication in the "Trade Marks Journal" . A published application will remain open to opposition by third parties for a period of three months. If no objections are received during this period, the application will proceed to full registration and a certificate will be issued within about six weeks from the end of the publication date.

Opposition and conflict with other marks
The trade mark examiner may raise objections to acceptance for registration of a mark, or third parties may file objections once your mark has gone to publication in the Trade Marks Journal. These objections may be overcome by obtaining a letter of consent from the owners of any conflicting marks, or by arranging for a hearing before the Registrar. At this stage it may be necessary to instruct a registered trade mark agent.

Classification of goods and services
Every application to register a trade mark must specify the goods and/or services of the mark. The list of the goods and services must be a clear and complete description. The Registry uses The Nice Classification System which divides goods and services into 45 classes (see below). This is similar to classification systems used in other countries.

How much will a trade mark application cost?
The costs involved are as follows:

A full search on name and logo and report on registration:

£50.00 plus £8.75 VAT

Trade mark application for one category:

£200 plus £35 VAT, plus £200 registration fee = £435

For each subsequent category thereafter:

£50.00 plus VAT, plus £50.00 registration fee

Fees must be paid when application commences.

These are the standard costs involved for a trade mark application. They do not cover the costs of any objections raised. It is not possible to determine whether objections will be made against an application and the costs involved. However, if objections are made, the possible extra costs could be:

charges for letters of consent from any opposing parties who already have similar marks registered;

charges for arranging and attending a hearing with the Registrar both to your representative and the Registry;

further charges from ourselves if the application procedure becomes long and complicated.

The Nice Classification System of Classes of Goods and Services

Class 1
Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
Includes chemicals for the making of products belonging to other classes. Does not include fungicides, herbicides, insecticides or preparations for destroying vermin, which are in class 5.

Class 2
Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
Does not include paint boxes for children which are in class 16, or insulating paints and varnishes, which are in class 17.

Class 3
Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
Includes deodorants for personal use. Does not include air deodorising preparations, which are in class 5 or scented candles which are in class 4.

Class 4
Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks.
Includes combustible fuels and scented candles.
Does not include fuel for nuclear reactors or electricity, which are both in class 1.

Class 5
Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings, material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
Includes food and beverages which are adapted for medical purposes. Does not include supportive bandages which are in class 10.

Class 6
Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
Includes mainly unwrought and partly wrought common metals as well as simple products made from them; metallic windows and doors and metallic framed conservatories.

Class 7
Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs.
Explanatory Note: This class includes mainly machines, machine tools, motors and engines. Includes parts of engines and motors; some parts for vehicles (e.g. exhausts for vehicles); vacuum cleaners. Does not include engines and motors for land vehicles are in class 12 or specialist machines (e.g. weighing machines are in class 9).

Class 8
Hand tools and implements (hand operated); cutlery; side arms; razors.
Explanatory Note: This class includes mainly hand operated implements used as tools in the respective professions. Includes electric razors and hair cutters; cutlery made of precious metal. Does not include surgical cutlery which is in class 10 or hand held and electrically powered tools (e.g. electric drills are in class 7).

Class 9
Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity;apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.
Includes computer hardware and firmware; computer software (including software downloadable from the internet); compact discs; digital music (downloadable from the internet); telecommunications apparatus; computer games equipment adapted for use with TV receivers; mouse mats; mobile phone accessories; contact lenses, spectacles and sunglasses; clothing for protection against accident, irradiation or fire.
Does not include printed computer manuals which are in class 16, self-contained computer games equipment which is in class 28, various electrical items (e.g. electric screwdrivers are in class 7 and electric toothbrushes are in class 21).

Class 10
Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials.
Includes electro-medical or surgical apparatus; massage apparatus. Does not include contact lenses, spectacles or sunglasses which are in class 9 or wheelchairs which are in class 12.

Class 11
Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.
Includes air conditioning apparatus, electric kettles, gas and electric cookers, vehicle lights.

Class 12
Vehicles; apparatus for locomotion by land, air or water.
Includes motors and engines for land vehicles and certain other parts and fittings (e.g. vehicle body parts and transmissions). Does not include certain parts or fittings for vehicles (e.g. exhausts and starters are in class 7, lights and air conditioning units are in class 11) or children's toy bicycles which are in class 28.

Class 13
Firearms; ammunition and projectiles; explosives; fireworks.
Does not include apparatus for use in playing paint ball combat games, which are in class 28.

Class 14
Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery; precious stones; horological and chronometric instruments.
Includes clocks and watches, custom jewellery. Does not include certain precious metal items (e.g. cutlery is in class 8, pens are in class 16).

Class 15
Musical instruments.
Includes stands and cases adapted for musical instruments.

Class 16
Paper, cardboard and goods made from these materials which are not included in other classes; printed matter; bookbinding material; photographs; stationary; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks.
Includes disposable nappies of paper for babies; printed publications.
Does not include adhesives for industrial purposes which are in class 1; downloadable electronic publications which are in class 9 or providing electronic publications which are not downloadable, which are in class 41. Does not include wallpaper which is in class 27.

Class 17
Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacturing; packing, stopping and insulating materials; flexible pipes, not of metal.
Includes semi-finished plastics materials for use in further manufacture. Does not include unprocessed plastics in the form of liquids, chips, granules, etc., which are in class 1.

Class 18
Leather and imitations of leather, and goods made from these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
Includes handbags, rucksacks, purses, clothing for animals.
Does not include leather clothing which is in class 9 (for protection against injury) or in class 25 (ordinary apparel), nor certain specialist leather articles (e.g. cheque book covers are in class 16).

Class 19
Building materials (non-metallic); non-metallic rigid papers for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.
Includes non-metallic framed conservatories, doors and windows.

Class 20
Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials or of plastics.
Includes both metallic and non-metallic furniture including garden furniture, pillows and cushions.
Does not include duvets or covers for pillows, cushions or duvets which are in class 24, furniture adapted for medical use, which is in class 10, or furniture adapted for laboratory use, which is in class 9.

Class 21
Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
Includes both electric and non-electric tooth brushes. Does not include electric kitchen appliances (e.g. food processors are in class 7 and electric kettles are in class 11) or kitchen and table cutlery which is in class 8.

Class 22
Ropes, strings, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes; padding and stuffing materials (except of rubber and plastics); raw fibrous textile materials.
Includes bags and sacks for transporting bulk materials.

Class 23
Yarns and threads, for textile use

Class 24
Textile and textile goods, not included in other classes; bed and table covers.
Includes textile piece goods, bed and table covers.
Does not include paper table linen (which is in class 16) or electric blankets (not for medical use) which are in class 11.

Class 25
Clothing, footwear, headgear.
Does not include clothing for the prevention of accident or injury which is class 9, surgeon's clothing which is in class 10 or clothing for animals which is in class 18.

Class 26
Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
Includes dressmakers' articles, badges for wear (other than precious metal badges).

Class 27
Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
Includes wallpaper. Does not include mouse mats which are in class 9, mats specifically shaped/adapted for vehicles which are in class 12 or travellers' rugs which are in class 24.

Class 28
Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
Includes hand-held computer games equipment which is self-contained (not adapted for use with TV receivers). Does not include computer games equipment adapted for use with TV receivers or software for electronic games which are in class 9.

Class 29
Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.
Includes prepared meals and snacks whose main ingredients are proper to this class (e.g. soups and potato crisps). Does not include sandwiches which are in class 30 or foodstuffs for animals which are in class 31.

Class 30
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
Includes prepared meals and snacks whose main ingredients are proper to the class (e.g. pizzas, pies and pasta dishes). Does not include foodstuffs for animals which are in class 31.

Class 31
Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruit and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.
Includes all food and beverages for animals.

Class 32
Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
Includes shandy, de-alcoholised drinks, non-alcoholic beers and wines. Does not include tea, coffee or chocolate-based beverages, which are in class 30.

Class 33
Alcoholic Beverages (except beers).
Includes wines, spirits and liqueurs; alcopops.
Does not include beers, which are in class 32.

Class 34
Tobacco; smoker's articles; matches and lighters.

SERVICES

Class 35
Advertising; business management; business administration; office functions.

Explanatory Note: This class includes mainly services rendered by persons or organisations principally with the object of:
(1) help in the working or management of a commercial undertaking,
(2) help in the management of the business affairs or commercial functions of an industrial or commercial enterprise,
(3) services rendered by advertising establishments primarily undertaking communications to the public, declarations of announcements by all means of diffusion and concerning all kinds of goods or services.

Includes the organisation, operation and supervision of loyalty and incentive schemes; internet advertising services, production of radio and television advertisements, accountancy, auctioneering, trade fairs, opinion polling, data processing, providing business information, certain specific services provided by retailers.
Does not include computer programming, which is in class 42 or raising finance for business, which is in class 36.

Class 36
Insurance; financial affairs; monetary affairs; real estate affairs.
Includes building society services, banking (including home banking), stockbroking, financial services via the internet, issuing tokens of value in relation to bonus and loyalty schemes, provision of financial information.
Does not include accountancy, which is in class 35, lottery services, which are in class 41 or surveying and conveyancing services, which are in class 42.

Class 37
Building construction; repair; installation services.
Includes installation, maintenance and repair of computer hardware; painting and decorating.
Does not include installation, maintenance and repair of computer software, which is in class 42.

Class 38
Telecommunications.
Includes all telecommunication services, (e.g. e-mail services and those provided for the internet); providing user access to the internet (service providers); operating search engines.
Does not include creating, maintaining or hosting web sites, which are in class 42.

Explanatory Note: This class includes mainly services allowing at least one person to communicate with another by sensory means. Such services include those which:
(1) allow a person to talk to another,
(2) transmit messages from one person to another, and
(3) place a person in oral or visual communication with another (radio and television).

Class 39
Transport; packaging and storage of goods; travel arrangement.
Includes distribution of electricity; travel information.
Does not include travel insurance which is in class 36, or booking holiday accommodation, which is in class 43.
Explanatory Note: This class includes mainly services rendered in transporting people or goods from one place to another (by rail, road, water, air or pipeline) and services necessarily connected with such transport, as well as services relating to the storing of goods in a warehouse or other building for their preservation or guarding.

Class 40
Treatment of materials.
Includes the development, duplicating and printing of photographs; generation of electricity.
Explanatory Note: This class includes mainly services not included in other classes, rendered by the mechanical or chemical processing or transformation of objects or inorganic or organic substances.

Class 41
Education; providing of training; entertainment; sporting and cultural activities.
Includes electronic games services provided by the internet; the provision of on-line electronic publications and digital music (not downloadable) from the internet.
Does not include downloadable on-line electronic publications or digital music which are in class 9 or educational materials in printed form, which are in class 16.

Class 42
Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; legal services.
Includes installation, maintenance and repair of computer software; computer consultancy services; the following internet related services are also proper to this class: design, drawing and commissioned writing for the compilation of websites; creating, maintaining and hosting the web sites of others; compilation, creation and maintenance of a register of domain names; leasing of access time to a computer database (on a dedicated line and not via the internet - access by internet service providers in general is in class 38).
Does not include providing access to the internet or portal services, which are in class 38.

Class 43
Services for providing food and drink; temporary accommodation.
Includes restaurant, bar and catering services; provision of holiday accommodation; booking and reservation services for restaurants and holiday accommodation.
Does not include provision of permanent accommodation which is in class 36 or arranging travel by tourist agencies, which is in class 39.

Class 44
Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
Includes dentistry services, medical analysis for the diagnosis and treatment of persons (such as x-ray examinations and taking blood samples), pharmacy advice, garden design services.
Does not include scientific research for medical purposes (such as research into cures for terminal diseases, which is in class 42), ambulance transportation, which is in class 39, health clubs for physical exercise, which are in class 41, or retirement homes, which are in class 43.

Class 45
Security services for the protection of property and individuals; a limited range of personal services not covered in other service classes, including dating services, funeral services, undertaking services, fire-fighting services, detective agency services.
Does not include beauty care services for human beings or animals, which are in class 44, or educational services, which are in class 41.