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| Jane Lambert |
18 Jan 2026
A trade mark can be a very valuable right. It confers the exclusive right to use the sign that you have chosen to distinguish your goods or services from those of other businesses in the United Kingdom and the Isle of Man. Not every sign can be registered as a trade mark. Some may be unsuitable because they are descriptive, offensive or reserved for a governmental or other institution. Others because they are the same as, or similar to, or marks that have already been registered or are in use. Registration is the procedure by which the Intellectual Property Office examines your application to satisfy itself that you are entitled to register the mark.
Why Register a Mark?
A trade mark does not have to be registered. There is an ancient judge-made rule that nobody may misrepresent his or her goods or services as those of another trader. That rule can be breached by using a sign that is the same as or similar to the established trader's trade mark. If it is, the established trader can bring an action for passing off. Sometimes, the law of passing off protects a sign that cannot be registered as a trade mark.
However, it is usually cheaper and easier to bring an action for trade mark infringement than proceedings for passing off. A claim can be brought as soon as the mark is registered and the right to recover damages is backdated to the date of the application for registration. There is no need to prove the accrual of goodwill through sales and advertising in a trade mark infringement claim.
How long does Registration Take?
If all goes well, your mark can be registered within 4 months of your application. However, it could take very much longer if there is an objection from an examiner or a challenge from a third party.
How much does it cost?
At present, an application will cost at least £170 if you make your application online for a single class of goods or services and do not instruct an attorney or other professional intermediary. Goods and services are grouped in classes in accordance with an international agreement known as the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks. Should you wish to register goods or services in more than one class, you will be charged an extra £50 per class. Those fees will rise to £205 for the online application and £60 per additional class on 1 April 2026 (see Intellectual Property Office fees to increase from April 2026, 5 Nov 2025). If you instruct a trade market attorney or other professional intermediary, you should add his or her fees and disbursements.
Should You Instruct a Trade Mark Attorney?
Unless you are familiar with trade mark law and have some experience of trade mark registration, I advise you strongly to instruct a trade mark attorney for the reasons I set out in Can I apply for a Trade Mark by myself or must I instruct an Attorney? 31 May 2017 NIPC Branding. Though many trase marks have been registered without professional assistance, unexpected difficulties can arise which can delay and sometimes even defeat an application (see Auntie Jane's Trade Mark Tips: No. 6 - Some of the Things that can go wrong 15 June 2017 NIPC Branding and Jane Lambert Auntie Jane's Trade Mark Tips: No. 7 - Some more Things that can go wrong 27 July 2017 NIPC Branding). An experienced attorney should be able to anticipate at least some of those difficulties and avoid them.
Where to find an Attorney
In both Can I apply for a Trade Mark by myself or must I instruct an Attorney? and Auntie Jane's Trade Mark Tips: No. 5 - How do I register a Trade Mark? 13 June 2017 NIPC Branding, I referred readers to the Chartered Institute of Trade Mark Attorneys' Find a Chartered Trade Mark Attorney directory. Over the years, I have worked with a lot of trade mark attorneys and have also been against many others. If a client asks for a recommendation, I can usually suggest 2 or 3 suitable names. I invite the client to call them all and select the one he or she likes best.
Intellectual Property Office Guidance
The Intellectual Property Office publishes a useful guide on its website entitled "Register a Trade Mark" consisting of the following pages:
- "decide which general category and specific type of goods or services (known as ‘classes’ and ‘terms’) you want to use your trade mark for
- check if anyone else has registered a similar trade mark."
"Do not choose terms that you do not plan to sell any goods and services in over the next 5 years. If you do, your trade mark may be challenged and you may have to pay legal costs."
If you instruct an attorney, he or she will carry out a search for you. If you have not instructed one, some of the Business and IP Centres can help you. The IPO offers a search and checking service known as "Right Start", which I discuss in the next section or you can search the IPO's database yourself.
If someone has registered the same or a similar mark for the same or similar goods or services, you need professional advice fast. If you have not already instructed an attorney, you should look for one now. Sometimes the issue is one that a tribunal could decide either way. In those circumstances, the attorney may wish to consult counsel specializing in intellectual property law for an opinion on the matter (see Jane Lambert IP Services from Barristers, 6 April 2013, NIPC News). You can also find help at one of the IP clinics operated by the Chartered Institute of Trade Mark Attorneys or the Chartered Institute of Patent Attorneys or at one of my initial advice and signposting clinics in London, Yorkshire and Wales.
Send Your Application- "details of what you want to register, for example, the words or slogan you want to use, or an illustration
- the personal or company details of the intended owner of the trade mark
- the type of goods or services (known as ‘classes’ and ‘terms’) you want to use your trade mark for - read guidance on what to do before you apply"
"Your application will be published on GOV.UK as soon as you have applied. This means someone else could use details from it, for example they could buy the website domain for your brand name."
If that happens, you should take professional advice.
The registration of a domain name that is the same as or similar to a trade mark without the proprietor's consent could be actionable once the mark is registered. The right to bring a claim is backdated to the date of filing of the application for registration by s.9 (3) of the Trade Marks Act 1994. However, para (a) of that subsection precludes the issue of infringement proceedings until after the application is granted.
If the mark has been used in sales and marketing to the extent that the owner has acquired goodwill in the mark in relation to certain goods or services, he or she may be entitled to bring an action for passing off. It may also be possible to claim the transfer or cancellation of the domain name in UDRP or other domain name dispute resolution proceedings.
After you apply
IPO officials, known as "examiners", will examine your application to see whether it complies with the Trade Marks Act 1994 and the Trade Marks Rules 2008. You should receive an examination report within a few weeks of submitting your application for registration.
The report will advise you whether there are any difficulties with your application. An examiner may think that your sign is inherently unregistrable or it may be the same as or similar to an existing mark. Objections in the first category are known as "absolute grounds for refusal" and are governed by s.3 and s.4 of the 1994 Act. Those in the second category are called "relative grounds for refusal" and are governed by s.5.
You are allowed up to 2 months to resolve the objection. If you cannot resolve the issue through discussion, you can refer the matter to the Registrar who is also the Comptroller General of Patents, Designs and Trade Marks (see s.62 of the Act). He or she will appoint an official known as a "hearing officer" to determine it. I have discussed what happens in If the examiner says "no" - ex parte hearings in the Trade Marks Registry, 10 Aug 2015, NIPC London.
Opposition
If there is no objection or the objection is resolved in your favour your application will be published in the Trade Marks Journal for 2 months. Many trade mark proprietors, law firms, trade mark agencies and sometimes even BIPC librarians look out for trade mark applications that come close to a particular mark. These are known as "watch services". If a trade mark owner objects to an application, he or she will usually write to the applicant, explain the objection and invite the applicant to withdraw the application.
Sometimes the parties can reach an accommodation known as a "coexistence agreement." The IPO publishes a useful fact sheet on the topic. If such an accommodation cannot be reached and the applicant refuses to withdraw the application, the objector may challenge the application in "third-party observations" under s.38 (3) or "opposition proceedings" under s.38 (2). The Intellectual Property Office has published some very useful guidance on both kinds of challenges in Objecting to other peoples trade marks and the legal costs to which I have written a supplementary article entitled Oppositions in the IPO's Trade Marks Registry 12 Aug 2015 NIPC London.
Registration
If your application survives examination and is either unopposed or an opposition has been resolved in your favour, your trade mark will be entered in the register of trade marks provided by s.63 (1) of the Trade Marks Act 1994 pursuant to s.40 (1). The registration will be confirmed bya certificate of registration from the IPO.
Registration does not mean that your mark is invulnerable. You will have to renew it every 10 years. If a third party believes the mark should never have been granted, its validity may be challenged under s.47. Should you fail to use the mark or should it cease to be distinctive, it can be revoked under s.46.
Contact
Anyone wishing to discuss this resource page may call me on +44 (0)20 7404 5252 during normal office hours or send me a message through my contact form.
Further Reading
Intellectual Property Office Register a Trade Mark IPO website
Professional Services
Jane Lambert Can I apply for a Trade Mark by myself or must I instruct an Attorney? 31 May 2017 NIPC Branding.
Chartered Institute of Trade Mark Attorneys Find a Chartered Trade Mark Attorney CITMA website
Jane Lambert IP Services from Barristers, 6 April 2013, NIPC News
Hearings in the Intellectual Property Office
Jane Lambert If the examiner says "no" - ex parte hearings in the Trade Marks Registry, 10 Aug 2015, NIPC London.
Jane Lambert Oppositions in the IPO's Trade Marks Registry 12 Aug 2015 NIPC London.
