Precisely registered and maintained trade marks serve as the foundation for a company's reputation. Our trade mark registration team help businesses secure, maintain and enforce their reputation by registering the best possible trade marks.
Trade Mark Registration
Trade Mark Opposition
Trade Mark Management
Trade Mark Infringement
Tailored trademark specifications
Trademark registration gap analysis
Trademark watching services
Trademark portfolio management
Trademark notifications and risk registers
UKIPO trademark registration, oppositions and invalidations
EUIPO trademark registration, opposition and invalidation actions
WIPO trademark registration
International trademark registration
Passing Off Claims
Legal Insurance
Trade mark registration: what you need to know
Businesses rely on brands to stand out in their marketplace. In essence, a brand is a sign (e.g. typically a name, slogan, logo) which is recognisable to the buying public. Registered trade marks are a legal way to protect these brands or those which are legally too similar from being used by someone else.
At Virtuoso Legal, we assist businesses in tailoring and securing the best possible trade mark application to ensure that the registration our clients receive is as strong as possible. For our clients, this means that their distinct and unique presence in the marketplace is protected and able to be strongly enforced.
We help businesses register their brands as trade marks in the UK, and also in the EU, US, China and worldwide.
Need help with a trade mark registration? Click the button below to get in touch with our team today.
Trade marks are registered intellectual property rights which protect signs that businesses typically use as brands. These brands are used to designate the origin of goods and services to the buying public and, over time, become valuable reputational assets to a business.
Trade marks grant the trade mark owner a monopoly right over the use of that sign - in essence, meaning that no one else can use that brand (subject to the classifications it is registered in, as well as the jurisdiction of the right, more on this below).
Trade marks are jurisdictional rights. This means that if you register a trade mark it only grants you protection for activity in the jurisdiction that it is registered. For this reason, it is important to make sure that you register trade marks in the marketplaces that matter most to your business.
Trade marks are registered in classifications which specify the goods and services which you wish to seek protection for. The purpose of this is to allow for the co-existence of brands across different types of goods and services.
Registered trade marks can include a number of different types of marks, including but not limited to: words, logos, colours, sounds, 3D shapes, holograms and more. For more information about the different kinds of trade marks and the classifications they can be registered in, click below to read our guide.
It is possible for business owners to register a trade mark themselves by submitting an application to the relevant intellectual property office. However, more often than not this can result in a range of problems which are ultimately more costly in the long run. In the next section, we will outline the benefit of seeking expert assistance in the preparation and submission of a trade mark application. What follows in this section is a non-exhaustive list of examples of pitfalls that may occur if you seek to self-file a trade mark registration.
The trade mark is not able to function as a trade mark and is refused by the examiner - there are certain types of brands that can and cannot be registered as trade marks. Once an application is made, it is reviewed by the trade mark examiner. If the mark cannot function as a trade mark in this way it will be refused outright. There are no refunds for when this occurs and this also typically results in a significant loss of time.
The trade mark has not received full clearance and is opposed, invalidated or provokes an infringement claim - trade mark law is very specific about what constitutes an infringement of existing trade marks, whether identical or similar. Clearance of a trade mark prior to application is important to avoid opposition, invalidation or infringement proceedings which are extremely costly and can derail business growth.
The trade mark specification is not precise - trade mark applications must carefully specify not only what classifications the trade mark is sought to be applied in, but furthermore specific use and planned use within those classifications. Imprecise specifications can result in problems relating to enforcement and trade mark validity down the line.
The trade mark being applied for does not cover what is sought to be protected - trade mark specialists are acutely aware of how a brand is best protected, and what exactly should be registered to achieve the strongest protection over a brand. Self-filers often fall foul of this, registering a "weaker" mark, or registering something which does not actually protect their key reputational asset.
Have you self-filed a trade mark application and have encountered these issues? Get in touch with our team to receive support in relation to your trade mark application by clicking below.
What are the Benefits of help from trade mark registration experts?
Trade mark registration specialists (such as ourselves) approach trade mark registration as a commercial activity. The key here is ensuring that the business secures the best possible protection for its brand, maximising the value of the trade mark to the business as an intangible asset. Benefits of instructing a specialist include:
Trade mark review and adjustment - reviewing the proposed trade mark and advising any adjustments required in order to pass an examination from the intellectual property office
Expert trade mark clearance - full clearance of the brand, identifying identical and similar brands that may cause issues during registration and providing advice and analysis of risk
Brand landscaping - determining the commercial footprint of the brand now and in the future to ensure that the trade mark registration meets your commercial goals
Tailored trade mark specifications - authoring of the trade mark specification within the application to ensure the broadest scope of protection and limit the risk of opposition
Negotiation and representation in opposition - outreach and negotiation as it relates to other tradem arks which may block the registration, where relevant
Trade mark registration gap analysis - identification of opportunities within the relevant trade mark registers to extend your brand protection
Trade mark watching services - oversight of trade marks in order to enforce the boundaries of the brand if and when infringers enter the market
Crucially, assistance from trade mark registration specialists, such as ourselves helps you secure the best possible asset, and avoid a range of issues that can occur from applying for a trade mark without the required expertise and experience.
To speak to our team of trade mark specialists in relation to registering a trade mark, click the button below.
The length of time it takes to register a trade mark can vary, depending on how smooth the process goes.
For our clients, the typical amount of time it takes to register a trade mark is 4-6 months, from submission of the tailored trade mark application to its full registration.
It is important to note, however, that once a trade mark has been registered, in certain jurisdictions it grants the trade mark owner rights from the day that it was registered (i.e. the rights are backdated to the date where the submission was received). Speak to a trade mark specialist to learn more about this.
what is the trade mark registration process?
The trade mark registration process we follow at Virtuoso Legal is as follows:
Review of the proposed trade mark
Advice and adjustments where necessary
Trade mark clearance
Drafting of the trade mark application and specification
Submission of the trade mark application
Review of the trade mark application by IPO examiner
(If not refused by examiner) publication of proposed trade mark in trade mark journal
Opposition window
(If not opposed after 3 months) publication of the trade mark
As above, the process of registering a trade mark takes between 4-6 months to reach publication, should no issues arise.
How much does it cost to register a trade mark?
The cost of a trade mark varies depending on where it is being registered and the number of classifications that it is being registered in.
Amount of classifications - each separate classification requires its own clearance search to determine what pre-existing trade marks may cause an issue. This takes more time and typically results in a higher cost.
Jurisdictions - different jurisdictions (or multiple jurisdictions) can often mean registering a trade mark via multiple registrations (although not always). This can mean payment to different intellectual property offices to secure the brand. In addition to this, in some countries, it is a legal requirement for a local agent to make these registrations (e.g. in the USA) which can cause an increase in fees.
Where possible we apply the best possible registration strategy to minimise the cost for our clients and optimise coverage both in terms of classification and jurisdiction.
As a ballpark figure, to register a trade mark in the UK and receive all the benefits listed above, we typically charge in a fee range of £900-£1200+VAT - although this is subject to the specific requirements of our clients. Note for this cost we ensure that the best possible brand is secured for our clients via a tailored application.
Looking for a quote for our team to handle your trade mark application? Click the button below to contact our team.
“Trademark registration is both an art and a science. It is important that when registering a trademark a business is able to secure the best possible asset for their business. This means navigating the tricky and unique area of trademark law and tailoring a trademark application to give a business the broadest scope of protection for their brands. The devil is in the detail and whether it's self-filed or non-specialist filed, we see marks which simply don't stand up to scrutiny when tested by opposition, invalidation or other disputes as they arise. That's why we apply our time and expertise to ensure our clients have a solid foundation for their business activity - and an asset that serves them for decades to come.”
