Trade Marks – Frequently Asked Questions | Irwin Mitchell

Get answers to the most commonly asked questions regarding trade marks, including the registration process, and what you need to do once your mark is granted.

How Long Does A Trade Mark Registration Last?

A trade mark registration will become due for renewal 10 years from the date of your application and can last indefinitely so long as it is used in commerce and renewal fees are paid.

How Long Does It Take To Register A Trade Mark?

The time it takes for an application to become successfully registered will vary depending on whether objections or oppositions are encountered. In general though, we expect successful trade mark applications to be registered:

  • UK: within 4-6 months
  • European Union Trade Mark: within 6-8 months

Is My Trade Mark Registration Effective Worldwide?

No, a trade mark is only effective in the country in which it is registered. If you intend to trade in other countries, it is necessary to conduct clearance searches and make filings in those countries too. There are several international conventions which we can advise you on to help you take advantage of the most cost efficient systems and procedures.

Once I Have My Registration What Do I Need To Do?

Owners of trade mark rights have an obligation to police and monitor their intellectual property and to use it correctly themselves, in order to build on the value of this important asset.  If you don’t, your mark could become susceptible to revocation, or be diluted by other third party conflicting rights.

Monitoring usually takes place by:

  • Watching relevant trade mark and company name registers 
  • Checking on the activities of your competitors
  • Policing distributors and franchises to make sure they are using your mark correctly

Our trade mark application packages include 12 months of monitoring of registers, after which we will offer you favourable rates for continued watching and related advice.

Trade Marks and Designs

Our team represent and advise many popular brands, including those in the fashion, media and catering industry. We offer a full service package to our clients, ensuring we provide you with adequate protection and guidance.

We can help with:

  • Clearance and strategic advice (locally, regionally and internationally)
  • Registration, enforcement and portfolio management
  • Oppositions and other matters before the UKIPO, EUIPO and representation at other national trade mark offices
  • Anti-counterfeiting and customs detention strategies
  • Dispute resolution, including cross border, multi-jurisdictional litigation
  • Registration of registered designs, filing and defending oppositions, invalidity and revocation proceedings

What Can Be A Trade Mark?

A trade mark usually consists of words (including personal names) and is sometimes combined with a logo or drawing. A trade mark may also consist of letters, numerals, shapes, sounds, smells and colour combinations. Most importantly, a trade mark must be distinctive.

What Is The Process For Registering A Trade Mark?
  1. Search and clear name for use and registration
    A search takes approximately one week, depending on the number of product and service classes and the number of results to review.
  2. Application filed with the Trade Mark Office
  3. Examination by the Trade Mark Office
  4. Response to any official objections
  5. Application advertised for opposition purposes (or refused by the Trade Mark Office)
  6. Application opposed (if unopposed go to number 8)
  7. Opposition proceedings
    If the opposition is overcome the mark will proceed to registration. You can withdraw your application at any time or negotiate with the opponent for an agreed settlement.
  8. Application granted or refused/withdrawn
  9. Trade mark renewal due every 10 years

Who Can Apply For A Trade Mark?

Trade marks can be owned by individuals, partnerships, limited companies, LLCs etc. In order to apply, we will need your full name, address and company registration number (if applicable).

Why Do I Need To Apply For My Trade Mark In Specific “Product And Service” Classes?

When applying for a trade mark you will need to include the goods or services you intend to use it for and we will convert these into the appropriate classification according to the international system which is used for trade mark registration.  

Trade marks can be registered in 45 different “product and service classes”, in order to define the protection they receive and to make it easier to search for earlier rights. You can find a full list of the trade mark classes here. Failure to include all the relevant goods and services at registration may result in improper protection and leave you vulnerable.

Following an initial consultation, we will recommend potential classes you may require. If you wish to add further goods or services in the future, a new application for registration will need to be made.

Why Is It Necessary To Carry Out A Trade Mark Clearance Search?

Clearance searches before the launch of a trade mark or brand, and prior to registration, are a very important step in determining whether your name or logo is available for you to use and register.  

We recommend that fully comprehensive searches are carried out to avoid any potential conflicts with prior rights. Good quality searching prior to launch should be seen as investment, as it could save you considerable costs in the long term, not to mention helping to provide a solid foundation for a strong and defensible brand in the future.  

Many online trade mark application services will offer a free identical search as part of their packages. In our view this is not sufficient for a newly-created trade mark that has not yet been on the market place.

For general enquiries

0370 1500 100

Key Contact

Georgie Collins