United Kingdom Trademark Registration

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1. Is registration of a trademark mandatory?

   Registration is not compulsory, but it is advisable. Otherwise the legal benefits of registration may not be available. Furthermore, compared to the burden of proof needed to enforce rights in an unregistered trademark, enforcement of a registered trademark is less expensive.

2. Which Intellectual Property rights are registrable?

   Any “sign” that can be graphically reproduced and is capable of distinguishing the goods or services of one person from another, such as words, names, devices and logos, can be registered. It is difficult but also possible to register certain three-dimensional shapes, colors, sounds, and smells.

3. Can a trademark be registered for covering a commercial establishment which activity is focused in selling goods to consumers, for example retail stores? If so, how is the registration procedure? Are there any special requirements for it?

   Yes. Under UK law there are particular drafting requirements that must be adhered to and an applicant must be specific for these purposes, but essentially these services are protected via class 35.

4. Is there any advantage in using a trademark before filing an application?

   Use prior to filing an application can be advantageous in that it may allow an applicant to (a) overcome an Patent Office objection to the application on the grounds of non-distinctiveness (as use may be used to demonstrate acquired distinctiveness); and to (b) invalidate later third party trade mark registrations or applications. Also, use of a mark (whether registered or not) may, if substantial, give rise to an independent unregistered right enabling the user to sue under the laws of passing off.

5. How long does the registration process take?

   In the absence of objections and oppositions, the registration process takes approximately 6 to 8 months.

6. Is there any requirement of use for registered trademarks? If so, what happens in case it is not used?

   A trademark must be used within five years of the date the registration is published in the Official Journal or the registration will become vulnerable to cancellation for nonuse. However, use after the five-year term may cure nonuse, provided that in the interim no third party has filed an action for cancellation for nonuse.

7. In the case of a registered mixed trademark (word + logo), is it possible to include in the logo, different or additional words from those mentioned in the word mark?

   Yes. However, a trade mark owner is advised against separating a registration in this way as it is likely to be seen as diluting the registration and risks 'non-use'. If a person wishes to alternate its reference to a word and logo separately it would be advised to make two distinct applications.

8. How can I know which is the due date for the renewal of a registered trademark?

   The term/renewal date of a registration is 10 years from the application date.

9. When should I pay the renewal fee of my registered trademark?

   A renewal must be filed during the six month period expiring with the renewal date.

10. Is it possible to pay the renewal fee of a patent after the renewal due date has expired? If so, when should I pay?

    It is possible to renew for six months after the renewal date with payment of a fine. Between six and twelve months after the renewal date, there is a further grace period during which, if the Patent Office exercises its discretion in the registrant's favor and a fine is paid, it may be possible to restore an expired mark.

11. What documents are required for filing a trademark or renewal application?

    No documentation is required for renewal.

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