GENERAL TRADEMARK FAQ's

Trademark is a word, a logo or slogan (phrase) or combination of the three, which is used when trading in order to differentiate your product or service from someone else’s and allow you a distinctive footprint in the market place.

Unfortunately not:

  • a word that is purely descriptive of the product or service or the functionality of the product or service cannot be trademarked. For example, Computer Shop would not be accepted as a trademark as it describes exactly what is being sold at the store;
  • a word or phrase that can been seen to be offensive (whether of an ethnic, religious, moral or other connotation);
  • attempting to misrepresent your product or service through the trademark, for example using the word silk in the name of a product when it is made of cotton (except where a reasonable person could not confuse the two, such as “White Satin” as the name of a perfume;
  • words in a foreign language that when translated into English are identical to that of a trademark already registered (or in the process of being registered in the same or conflicting class);
  • common use words such as “and”, “the” and the like may be contained within a trademark, but the owner of a trademark will not be able to restrict another person’s use of these words;
  • a word, slogan or logo depicting a political party or famous person (whether trademarked or not) unless specific written permission is obtained;
  • national, provincial, state or organisation flags, emblems or insignia;
    currency of any country or sovereign state; and
  • a geographic location unless it is followed or preceded by a distinctive phrase.

This varies between countries and regions and is dealt with specifically below.

  • A trademark can be owned by a company (private or limited), a trust or any other entity.
  • A trademark can also be owned by an individual, but that individual will be required to be over the age of majority in the country/region in which the trademark is being registered.

Yes, it can be transferred between two people, two entities, from an entity to a person and vice versa.

A trademark has a lifespan of 10 years, the date being calculated from date of filing and not date of registration, before naturally terminating.  Prior to the expiration date of the trademark you (or your agent) will be contacted, and if you wish to extend the life of your trademark this may be done for a further period of ten years.

The services and/or products which are assigned to a trademark are divided in 45 different classes.  In some cases a trademark will fall into one class only, and in others, more than one class may apply.

The Nice Classification system is the breakdown of each class and which service and/or product is allocated to such a class.

Yes you may, but you will not have the full protection of the trademark legislation until registration is complete.

A priority claim allows a person or entity that has filed a trademark in one country (the initial filing) to file the identical trademark in a different country or region (secondary filing) within 6 months of the initial filing, and any other person who has attempted to file the identical trademark to the secondary filing in that country or region’s trademark will be rejected (even if your trademark was not on that country or region’s trademark register during the interim 6 month period).

No, only countries and regions that are signatories to the Paris Convention.

This is a trademark which covers the whole of the European Union.  By way of example, if you register your trademark in only one country within the European Union it will automatically be recognised as a trademark throughout the European Union.  This trademark system was previously known as the Community System, but is now also referred to as a European Trademark.

UK TM FAQ's

It takes approximately 5 months for your trademark to be registered, but this may vary if objections or oppositions are raised.

If the country in which the initial filing is performed is a signatory to the Paris Convention, and the priority is claimed before the expiry of the 6th month anniversary of the initial filing then yes the prior claim will be accepted.

  • The use requirement is in place to ensure that no third-party files the same trademark as you for the sole purpose of preventing you from doing so.
  • Accordingly, you are required to use your trademark within 5 years from the date on which the registration process was finalised (i.e. the date that your trademark was published in the Trade Marks Journal).
  • The use of your trademark must take place in the country/region in which it was registered and it can be a minimal use in order to satisfy the use requirement.

Yes, you will also have protection in Wales, England, Scotland, Northern Ireland, the Isle of Man and the Falkland Islands.

Yes, you can develop your brand first and begin trading with the name that you wish to trademark before proceeding to file same.

Certain of the benefits in respect of this course of action would be:

  • that you would be able to show your trademark as being distinctive within the market place;
  • you would be able to argue against any opposition that may be raised against your brand name based on its distinctiveness;
  • even if a third-party were to file a trademark identical to your unregistered brand name, if yours has been in existence for longer than the third-party’s trademark you would be able to invalidate the registration of such trademark; and
  • you would be able to build up brand recognition, become known in the market place and secure better protection as a result.

Not using your trademark can result in it being cancelled or overturned.

You can also register:

  • names;
  • devices;
  • sounds;
  • scents;
  • holograms,
  • motions;
  • touch;
  • taste;
  • 3-dimensional shapes; and
  • colours.
  • You may only file in classes that pertain to your trademark. If your trademark legitimately falls into more than one class then you may file your trademark in all of the classes or only those which you think are the most appropriate for you and those that would afford you the most protection.
  • You may also want to consider your budget, bearing in mind that you can always file in the additional classes at a later date.
  • The characteristics of your trademark should also be taken into account when making a decision as to which classes to file in, if a multiple filing is an option.

If your trademark is made up of a word and a logo or form of graphic design then your best way forward would be to file two applications (in the same class if need be), with the one application consisting of your word only and the other being a combination of the word (this would be a word mark application) and the logo/graphic design (this would be a combined mark application).

  • If a third party had to file a combined mark where the text was similar to your word mark, but the logo/graphic design portion was different then their application could be accepted because as a whole it would be different to your combined mark. However if you were also holding a word mark then their application would be rejected based on the similarity between the two word marks.
  • If at some stage during the life of your trademark you choose to redesign the logo/graphic design portion of your trademark your combined mark would no longer be recognised as even if the word portion of it did not change as a registered trademark must always be identical to that registered. This would mean that if you didn’t register a separate wordmark then there would be no protection for your trademark at all and it may be cancelled.
  • A wordmark, so long as you do not change the spelling of the word can be portrayed in any colour or font style/size so long as it does not encroach on a third-party’s trademark and it is always useful to have this degree of flexibility as a wordmark contained in a logo/graphic design cannot change, but this inflexibility gives you certain protection insofar as the design elements of your logo/graphic design are concerned.

You certainly can amalgamate your slogan into your word mark and/or logo/graphic design, although based on the protective measures as set out above, filing it on its own would provide you with the best protection.

If your trademark is rejected, we will refund you our professional fees paid. Please note that that this does not include the official filing fees that we pay to the UKIPO. This is on account of the fact that the UKIPO does not refund their fees to us at all.

EU TM FAQ's

It takes approximately 6 months for your trademark to be registered, but this may vary if objections or oppositions are raised.

Yes, you can develop your brand first and begin trading with the name that you wish to trademark before proceeding to file same.

Certain of the benefits in respect of this course of action would be:

  • that you would be able to show your trademark as being distinctive within the market place;
  • you would be able to argue against any opposition that may be raised against your brand name based on its distinctiveness
  • even if a third-party were to file a trademark identical to your unregistered brand name, if yours has been in existence for longer than the third-party’s trademark you would be able to invalidate the registration of such trademark; and
  • you would be able to build up brand recognition, become known in the market place and secure better protection as a result.

You can also register:

  • names;
  • words;
  • sounds;
  • slogans
  • devices
  • motions;
  • holograms;
  • trade-dress;
  • 3-dimensional shapes; and
  • colours.

Yes, this option is available to you so long as your home country is a signatory to the Paris Convention and/or your home country is a World Trade Organisation member.