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Trademarks: the basics

Before you apply to register a trademark, you need to do two things:

1. Check if your brand is capable of being a trademark; and
2. Do a search to ensure it hasn’t already been registered.

Can it be trademarked?

You can trademark a word, logo, colour or sound (or a combination of these). It cannot:

• be offensive (no swearing, porn etc)
• simply describe the goods or services - applying to trademark ‘online dating’ won’t fly for a dating app
• be misleading (e.g. using “organic” for products that are not organic)
• be a 3-dimensional shape that has functional properties, such as a lego brick
• be too common and non-distinctive, e.g. be a simple statement like “We’re great designers”
• look too similar to state symbols like flags or hallmarks

The search: has your trademark already been registered?

Your trademark cannot be the same or similar to something that’s already been registered by someone else, unless their trademark is for different ‘classes’ of products or services.

It’s time for the search...

You can search for existing UK trademarks using this tool by the UK Intellectual Property Office (UKIPO). There are 45 classes and you can only stake your claim for specific goods and services by selecting one or more of the classes - so conduct your search accordingly.

If your goods and services don’t appear to fit into one or more of these class headings, you can delve deeper using this tool: TMclass. If you’re looking to operate outside the UK, you’ll need to broaden your search across the EU or even worldwide using the Global Brand Database. This search process is critical, and not for the faint-hearted!

The Trademark Registration Process

When you’re ready to register your trademark, you can apply to register it in the UK only, the EU (called a ‘Community Trade Mark (CTM)’) or worldwide.

Here’s the trademark registration process in a nutshell:

Find a trademark expert

Figuring out whether your trademark is capable of being registered (from a technical perspective), conducting the searches and navigating the registration process is hard. Most entrepreneurs find it too daunting and choose to get help from the pros. They’ll do the searches for you, give you technical and strategic advice and handle any objections raised by the UKIPO or third parties.

All the lawyers and trademark attorneys on Lexoo have been vetted for their expertise. They can help you with both trademark registration and advice; but also help you enforce your trademark and take action against others who’ve infringed your trademark, such as counterfeiters. In each case, we hand-pick the right experts to suit your requirements and invite them to quote for your work so you can compare and pick the right lawyer.

How much can you expect to pay?

The cost to register a trademark depends on a number of things:

• how you want to protect your brand, for example the word(s) only or logo or both (these will be separate applications)
• the number of classes you register for each application
• whether you’re registering in the UK only, or the EU (or worldwide)
• the cost of any professional fees charged by a trademark attorney or trademark lawyer; and
• the government registration fees

You can use this handy tool to estimate the government registration fees for either a UK or a EU Community Trade Mark.

Here’s the lowdown:

UK trademark costs

To register a trademark in the UK you’ll pay an initial government fee of £200 (or £170 if completed online), for registration in one class. Then it’s an extra £50 per additional class. Professional fees for advice and having your application done via a trademark attorney or trademark lawyer is extra, typically starting at around £400 for one class.

Community Trade Mark (CTM) costs

Government fees to register a Community Trade Mark for protection in the EU start at €900, which includes three classes. Each additional class costs €150. Again professional fees are extra, which tend to start from around £750 for three classes.

Top Tips to register your trademark

1. Do a (thorough!) search
   • Trademark application fees are non-refundable - if you apply and find out someone else has your trademark, you’ve just blown a lot of money. Do a comprehensive search and get an expert to help - it’s worth it!
   • If you want to DIY, try the resources linked to above and search for competing brands either by application number or keywords, or alternatively look for future pending trademarks in the Electronic Trademark Journal.
2. Think outside the box
   • If you haven’t yet named your product or service, remember descriptive names such as “Bristol Business Brokers” are virtually impossible to trademark. Think of something unique, it’s much easier to trademark.
   • Some of the most distinguishable and well protected brands are invented (or misspelled) words, like Kodak or Google.
3. Don’t forget your packaging
   • By registering a trademark you can protect your logo or words, but also your product packaging. For example Toblerone’s prism-shaped packaging and Coca Cola’s classic glass bottle.
4. Choose your market
   • You might only be operating in the UK today, but think about the future - will you expand to the EU or US for example?
   • If you’ll be operating within the European market, consider registering a Community Trade Mark (CTM) now.
5. Stay ahead of your competitors
   • Try to be two steps ahead of your competitors - you might be able to anticipate their future product lines or services and preemptively register trademarks that may help protect your turf.
6. Be meticulous (and ambitious!)
   • To protect your brand as much as possible, carefully review all the classes that might apply to your businesses, including those that are not obviously applicable.
   • Don’t just think about what you do now, think about what you might do in future and apply for those classes too. You can’t add more classes once your trademark is registered - be thorough.
7. Be realistic
   • Applying for trademark protection in classes that you don’t provide services, can undermine your whole application and prolong the registration process.

And finally, if you need help, send us an enquiry and we’ll get you multiple fixed-fee quotes from trademark attorneys within 24hrs, for free. Give us a try!

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