Help

A trade mark is a mark, brand or sign that helps a seller distinguish their goods or services from others. The law recognises the value that such marks can have. So offers protection through registration, and preventing use by others.

Through our web service you can register a word mark, made up of plain text. These are the most common, and this help section looks only at word marks.

No.

The trade mark registries, who decide on such things, require a trade mark be above all ‘distinctive’.

That is, it clearly marks what you are selling from others’ goods and services.

For this reason they like made up words as they are less familiar and so distinctive. Real examples are

• Aventiq
• Qinetic
• Viagra

But they will also accept word marks involving known names (if none similar already registered) such as

• Fortnum & Mason
• Wayne’s Patisserie
• Shakespeare shipping

Or common words used in unfamiliar ways

• snail plumbing
• air publishing
• salt CDs

Word or words that are commonly used to describe your products or services are not allowed as not distinctive.
Such as

• leather handbags
• china plates
• rubber flooring

Or descriptions or phrases commonly used for those products or services

• tastes great
• built to last
• divine

Trying to get around the distinctiveness or common phrase barrier by intentional misspelling does not work

• klever klene
• supa food

Has someone else got there first?

- if a trade mark looks the same or similar to yours (for similar goods or services)
- if it sounds the same as or similar to yours (for similar goods or services)

Is it rude? Or likely to cause offence?
A specially protected emblem?
Against the law?
Deceptive or misleading about the goods being registered for?

Registering a company name at companies house or as a domain name does not mean that it will be accepted as a trademark, nor does it improve its chances.

trade mark	goods / services	?	comments
24/7	any		Common description: many say they operate 24/7
shoes direct	mail order shoes		direct' is widely used, and as a rule specifying shoes does not help
wonderstuff	oil lubricant		joining words together does not make a mark acceptable
klever klene	cleaning		if a word or phrase spelt correctly would not pass, misspelling does not help
quickshop.com	internet		presenting as a domain name (.com, .co.uk) does not help
monkey nuts	clothing		acceptable for clothing as not common usage. would not pass for food, animals etc.
pink box	computers
Zooby 24/7	any		is now distinctive
Monteverdi direct trademark services	trade mark services		is now distinctive
slippery sid’s wonderstuff	oil lubricant		is now distinctive
kevin’s klever klene	cleaning		is now distinctive
quacks.com	internet		is now distinctive

Before applying to register a mark it is advisable to do a 'search' to see if there are any obvious reasons why the mark cannot be registered (otherwise the registration could end up in expensive failure). We have written clever software (patent pending) which automates a large part of the search process, which means that you can search on our site for free.

While our search is free, other firms charge for this service as it takes them a lot of time doing it manually. Their fees range from £75-150.

If our free search indicates that the application is likely to fail, then you can buy an optional detailed report. This lists all the trade marks that are most similar. To help you or a trade mark agent work out the changes that would make an application more likely to succeed.

Unfortunately, no. As explained above trade mark applications can fail for other reasons than similarity to existing marks. Lack of distinctiveness is the most common reason. So our experts check this, as one of their 23 separate legal checks.

Our software does check for descriptiveness. However this sort of common sense judgement between phrases and products is still best made by people. As it requires lots of bits of information about the world. Its one thing to get a computer to think like a lawyer. Quite another to get it to think like a normal person.

For instance a phrase often used to describe one product, such as ‘smells great’ for perfume (not allowed), is never used by ordinary people for many other products, such as tables, or musical instrument etc. (allowed). So ‘smells great’ can be registered as a Trade Mark for these items.

Two people can own the same trade mark. But only if the goods and services they’re used and registered for are different. To make sense of what goods and services are similar a system of classes operates. 1 to 34 cover all possible products and 35 to 45 for all services.

So after you have entered the text of your trade mark and selected the registry to search (UK, or EU Community Trade Mark), select the class or classes for your goods and services. Also for those you plan to develop.

If the search result is OK, you can go on. If not OK, try it again with just the most important class(es). As with fewer classes, the less chance of bumping in to an existing Trade Mark that is too similar.

If you’re not sure which is the right class contact us.

If you want protection for your goods and services in European countries, not just the UK, then a Community Trade Mark is for you. This one application gives protection in all member states of the EU, and at much lower cost than filing in each country separately. Those holding a CTM have priority over an application for a similar mark in the UK.

If you plan only to ever sell your goods and service in the UK, then although more limited than a CTM, it can be granted faster and is cheaper.

	UK TM	CTM
Coverage	UK only	all EU
Seniority	No	Yes
Ease of registration	average	bit harder
Time	6 - 9 months	14 - 16 months
Statutory filing fees	£170 + £50 per class	~£840 (€900) application (1-3 classes)
Our fees	£249 + £25 per class	£379 (1-3 classes) + £50 per class

See diagram

Apply online through TrademarkDirect

our trade mark experts check application

If OK we file online and pay statutory fees (If not we propose small changes or refund fees less £25 admin)

UK TM office confirms receipt (within 6 days)

Examination by TM office and report sent (within 2 months)

If mark accepted by office published in journal within 3 weeks (if concerns raised we pass these on to you, and recommend TM agent from whom to seek advice, or you can abandon the application at this stage. Irrespective of guarantee if you choose not to proceed no fees are refunded).

After 3 months, if no other TM holders opposed the registration on grounds of similarity (aural, visual, conceptual), registration certificate issued.

(But if there are those against then the opposition process begins, lasting 3 - 6 months depending).

The EU (Community Trade Mark) process
(14-16 months for unopposed application to reach registration)

Apply online through TrademarkDirect

our trade mark experts check application

If OK we file online and pay statutory filing fees (If not we propose small changes or refund fees less £25 admin)

Examination by OHIM office and some national registries report sent (6 - 9 month)

If mark accepted by office on absolute grounds (i.e. passes all tests except whether another similar mark already registered) Published in Community Trade Marks Bulletin within 2 months.

(if concerns raised we pass these on to you, and recommend TM agent from whom to seek advice, or you can abandon the application at this stage. Irrespective of guarantee if you choose not to proceed no fees are refunded).

After 3 months, if no other TM holders opposed the registration on grounds of similarity (aural, visual, conceptual), registration certificate issued.

(But if there are those against then the opposition process begins, lasting 3 - 6 months depending).

Trade Mark registries can object to a trade mark application on absolute grounds. That is any of the reasons given in section 2, other than aural or visual similarity to another mark. You as the applicant then have an opportunity to put forward counter-arguments. If these are not accepted by the registry there is a subsequent appeals process.

Important
We do not put forward applications unless our experts think they will succeed. And certainly not if we think there are any grounds for an objection.

However we do not support applicants in overcoming objections. We can though recommend experienced trade mark agents. Their time and advice will require you to pay additional fees. If you choose not to pursue the application to the full extent possible all rights under our guarantee scheme lapse. So you will not be reimbursed our fees or statutory fees.

The UK registry also checks for similarity and provide the applicant with this information. They also notify the holders of marks they consider similar who are then free to oppose (see section 8) However they, the registry, do not object to the application on the basis of similarity.

If other trade mark owners oppose on the basis of visual or aural similarity you have the opportunity to put forward counter-arguments or reach an agreement with them over shared or restricted usage. The trade mark officials at the registries then make a judgement. There is a subsequent appeals process.

Important
We do not put forward applications unless our experts think they will succeed. And certainly not if we think there are grounds for an opposition.

However we do not support applicants in overcoming oppositions. We can though recommend experienced trade mark agents. Their time and advice will require you to pay additional fees. If you choose not to pursue the application to the full extent possible all rights under our guarantee scheme lapse. So you will not be reimbursed our fees or statutory fees.

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