Registering a trademark may seem like an unnecessary hassle. Yet leave your business name unregistered and you risk it being used by competitors to steal your customers. Trademarks provide essential legal protection, so knowing how to trademark a name in the UK is a vital step in securing your business.
Trademarks are valuable assets. Once registered, you can use the ® symbol to show that your brand and logo are protected. Registered trademarks can be sold, traded and even used as security on loans and mortgages. If you trademark a name, you can also license it to other businesses – such as setting up a franchise – and rely on the trademark to prevent other companies from imitating your brand, services or products.
How to trademark a name in the UK
The first step in protecting your business is to know exactly what counts as a trademark. A good sense check is to identify the elements of your brand that are unique to you. These can be a combination of words, logos, symbols, colours, images and even sounds. If a particular combination represents your brand – for example a product name such as McDonald’s Big Mac hamburger or an audio clip such as Intel’s TV advertising jingle – then you should consider trademarking it.
There are exceptions. You can’t be too literal or descriptive when looking to trademark a name. Names that describe the goods or service, or that are a characteristic won’t be allowed. For example, you can’t register the word MILK for a range of milk drinks or WINDOW CLEANER for a window cleaning service.
Your trademark must be unique so regular names can be tricky. Consider using a made-up name when considering how to trademark a name. Brands such as Nike, Microsoft and Kodak are all fictional names that allowed them to be successfully established as a unique, trademarked business name.
Conduct a UK trademark search
Before applying to trademark a name in the UK, it’s vital to check whether existing or similar trademarks exist. You can search for existing and expired trademarks using the UK Intellectual Property Office’s (UKIPO) database. You can also search for symbols and phrases, returning a list of any similar trademarks and the class they are registered in.
Searching the UKIPO database is free, though conducting a DIY search yourself can produce limited results. It may be worth engaging a chartered trademark attorney to help, as they can conduct a more detailed search of registered trademarks. You can find a list of chartered attorneys at The Chartered Institute of Trade Mark Attorneys.
Understand trademark classes
Registering a trademark business name involves choosing the class of goods and services that you want the trademark to cover. There are 45 different trademark classes: 34 covering goods and products and 11 covering services. Known as the Nice classification, you can review the full class list at the World Intellectual Property Organisation.
Each class covers different industries and products. Product classes range from chemical products used in industry, science and agriculture such as adhesives and cosmetic ingredients (Class 1) through to musical instruments such as pianos (Class 15). Service classes range from education including animal training (Class 41) to food, drink and hotel services (Class 43). Each class lists in detail what is included and – importantly – what is excluded from each class.
Choose the right trademark class
It’s important that you pick the relevant class for your business when you trademark a name. A trademark is registered to a specific class, meaning different businesses can register the same trademark in different classes. Each business has to restrict the use of their respective trademark to the class they registered in.
Define your product or service – Using the Nice classification, identify the activity of the good or service by asking questions such as: ‘What is the purpose of the goods or service I’m providing?’
Use TMclass to help pick a class – If you’re still unsure as to which class you should register your trademark business name with use the TMclass classification search tool.
Register for all relevant classes – If your brand is likely to be used across several categories, such as a fashion brand creating clothing (Class 25) and a range of make-up (Class 3), then you need to register in all classes your trademark will operate in.
Deal with existing trademarks
If a trademark search reveals an existing or similar trademark to the one you wish to register you have a few options:
Check trademark class – If a trademark has been registered in one class and your business is operating in a different class, you may be able to trademark your name in a different class to the existing registered trademark.
Check trademark use – Once a trademark is registered, it must be used commercially. If a trademark hasn’t been used for five years or more, or is listed as expired, you can seek to have the existing trademark cancelled and then register your own trademark.
Seek permission to use the trademark – The UK Intellectual Property Office’s (UKIPO) database includes details of who owns a particular trademark. Write to the owner asking permission to use the trademark. They may give you permission or agree to license its use for a fee.
Change your trademark – Explore if changing colours, style and design of the mark is enough to differentiate it. Infringing a trademark risks your entire business. If you can’t register what you have, it’s best to go back to the drawing board and rebrand rather than risk future legal action.
Registration: how to trademark a name in the UK
Once you’ve established what you want to trademark and the classes you wish to register in, you can apply to the UK Intellectual Property Office. You can register online with the UKIPO or trademark a name using Form TM3 via post. Expect the process to take around four months in total if there are no objections.
You will receive an initial report on your application within two weeks. You have two months to respond to any objections raised at this point. Most objections from the UKIPO revolve around how distinctive a trademark is. The more distinct it is – such as a unique name and logo – the easier it will be to register.
If there are no objections, your application will be published in the Trade Marks Journal for two months. Once published, anyone can object to the application such as a similar business with an unregistered trademark.
Deal with trademark objections
If someone objects to your trademark application, the UKIPO will try to resolve the issue. You can either withdraw the application, defend the application or try to directly resolve the issue with the person raising the objection.
A trademark application can’t be concluded until all objections are resolved, and you may have to take legal advice if you want to challenge the objection, which can be costly. Once any objectives are resolved – or if there are no objections – the trademark will then be registered within two weeks of the end of the publication period.
It’s worth knowing that even if you successfully register a trademark it can still be challenged and declared invalid. Objections can come from a business trying to register a similar trademark, or a business adopting a wait-and-see approach to see how you are going to use your trademark.
Costs of trademarking a name
Applying online to register a trademark is the cheapest option. It costs £170 to register online for a single class, with each additional class priced at £50. Applying by post costs £200 to register for a single class, and £50 for each additional class.
It’s worth considering paying for the UKIPO’s online Right Start service. This reduces the initial cost to £100 plus £25 for each additional class, and checks if your application meets the rules for registration. You’ll receive a report and if you continue with the application you’ll pay a further £100 plus additional £25 for each class.
Once you’ve registered your trademark
A registered trademark is valid for ten years, and you’ll need to actively use it to prevent losing it. You’ll need to renew the registration every ten years, but you won’t need to make a fresh application. It’s a good idea to use the trademark commercially within a few years of registration. Not using the trademark in a five-year-period can leave you open to having the trademark challenged and removed from the register.
The trademark has to remain the same throughout the period. If you change any aspects – such as typeface, colour or design – you’ll need to make a new application. Similarly, if you extend your brand into a different trademark class, you’ll need to apply for the trademark to be valid in that class.
Enforcing a trademark
Protecting a trademark means actively enforcing it. You’ll need to keep a watch on other unauthorised uses of your trademark. Infringement is usually handled under civil law. Sending a ‘cease and desist’ letter from a solicitor is usually enough to stop illegal use of your trademark.