The Trademark Process – How trademarks around the world are actually obtained?

Obtaining a trade mark may seem like a complicated and drawn out process. At BKIP, we aim to demystify

the process and give you an insight into how a trademark is actually registered

UK:

To begin with, a trademark must be registered with the United Kingdom Intellectual Property Office

based in Newport. The logo, word or subject of the copyright must clearly be entered, along with

which class you want to obtain a trademark under. There are numerous classes, and BKIP will help

you understand which class you need to file under, as not registering under the right amount will not

provide the protection it deserves, whereas too many could easily make the trademark void and

rejected.

Once filed, the trademark will then be allocated under the watchful eye of an examiner, who will

determine whether the trademark can be registered. For standard trademarks such as words and

logos this should present little difficulties, especially if a detailed search of other trademarks has

been carried out. As a guide, the examiner will usually make a decision within a month, dependent

on caseloads

After the trademark has been approved by the examiner, it will then be published in the weekly

“trademark journal” for a period of two months. This is the most crucial period for a trademark, as it

is this stage any opposition may be mounted. The United Kingdom Intellectual Property Office will

first notify owners of any existing trademarks which may be similar and allow them to oppose your

mark. During the two months that the trademark is awaiting registration in the trademark journal,

anyone can oppose the trademark if they feel that the trademark is too similar to theirs. This

highlights the need for trademark owners to view the Trademark journal regularly or risk losing their

trademark, a service which BKIP can provide for clients once registered, or clients with existing

trademarks.

If there has been any opposition to the trademark, the UK IPO will make a decision whether the new

trademark actually does infringe an existing trademark and thus refuse the application if it does, or

dismiss the opposition if it does now.

Following the end of the two month publication period in the journal, if there has been no successful

opposition, then the new trademark has been registered. Certifications of proof will be then sent

out, and the trademark will be in effect. It is recommended that as soon as certificates are received,

then the trademark is used, as a trademark not being used will be regarded as “dormant” and thus

potentially taken off the register.