Auntie Jane's Trade Mark Tips: No. 5 - How do I register a Trade Mark?

Jane Lambert

Probably the best advice I can give to an entrepreneur or some other business owner who wants to register a trade mark is:  consult a trade mark attorney.  In  Can I apply for a Trade Mark by myself or must I instruct an Attorney? 31 May 2017 I advised that it is possible to apply for a trade mark without an attorney, that it has been done many times before and that unrepresented applicants can expect a certain amount of practical help from the Intellectual Property Office ("IPO") but I would not recommend it. I cautioned that it is a lot of trouble to save a few hundred pounds and it could result in a lot of extra expense as there are many pitfalls in the process.

In that article, I directed readers to the "Find an Expert" section of the Chartered Institute of Trade Mark Attorneys' website or suggested that they might attend an IP clinic or even have a word with me. The fee that any of them would charge for taking your instructions, ascertaining your needs and preparing your application would be chickenfeed compared to the cost of your time in learning how to do all that for yourself. If you try to do it yourself there is a much higher risk of something going wrong. And in the very unlikely case that an attorney gets it badly wrong, he or she is regulated and insured against professional negligence whereas you are not.

For those who chose not to take my advice, I gave a number of tips. They are worth reading again even if you do instruct your attorney because you will find it easier to instruct your attorney and the attorney will find it easier to advise you if you know what is going on.  If you want to register an EU trade mark you should also read the EU Trade Mark fact sheet published by the IPR Helpdesk.

Your application to register a mark does not mean that it will be accepted. In tomorrow's tip, I will consider some of the things that could possibly go wrong. Theresa May will tell you all about that.

You will find my other tips indexed here.

If you are an entrepreneur, business owner or anyone else seeking guidance on UK trade mark law, I can give you up to 30 minutes of my time for initial advice and signposting. That may not be enough time to dispose of your issue but it should be enough to define it and assess what further assistance you need, what sort of professional is best placed to supply it and how and where to find such assistance.  

Can I apply for a Trade Mark by myself or must I instruct an Attorney?

Jane Lambert

The answer is "yes".  You can apply for a trade mark without an attorney. It has been done many times before.  You will get a certain amount of practical help (though no legal advice) from the Intellectual Property Office ("IPO").  But I would not recommend it. It's a lot of trouble to save yourself a few hundred pounds and it could land you in a lot of extra expense as there are lots of pitfalls in the process.

Why you should instruct an Attorney
It takes time to qualify as a trade mark attorney.  Trainee trade mark attorneys learn about the sort of marks that are registrable and those that are not.  Attorneys know what to look out for on a trade mark search. They know how to draft your specification in a way that is wide enough to cover every business activity you are likely to undertake but not so broad that it leads to an objection. If, for any reason, there is an objection to your application an experienced attorney stands a very good chance of resolving it quickly and inexpensively.

Where to find an Attorney
If you do not already instruct a trade mark attorney here are some possible ways of finding one.  You can consult the Chartered Institute of Trade Mark Attorneys' website. There is a link to a searchable database of all the attorneys in the country.  If you want a personal recommendation, I can introduce you to attorneys with whom I have worked successfully in the past.  You could also attend one of the IP clinics that the Chartered Institute of Patent Attorneys runs in conjunction with Business and IP Centres and PatLib libraries around the country.

What to do if you decide not to take my Recommendation
If, despite my recommendation, you decide not to instruct a trade mark attorney:

Tip #1 Read the IPO guidance very carefully.
The IPO has published the following useful guides:

• Apply to register a trade mark
• What you can and can't register
• Apply
• After you apply.

Make sure you understand everything in those documents before you do anything,

Tip #2: Carry out a thorough trade mark search

You can search the IPO, EUIPO  and WIPO databases yourself or you can ask a patent librarian to make a search for you for a small fee.

Tip #3: Make sure that your application covers all relevant goods and services 

You register a mark in respect of specified goods or services. Make sure that the goods and services in respect of which you register your mark cover not just simply the goods and services that you are supplying now but all those that you plan to supply at any time over the next 5 years.

Tip #4: If there is an objection to your application, take professional advice at once

If the examiner says that your mark is unregistrable because it falls within one or more of the absolute grounds for refusal provided by sections 3 and 4 of the Trade Marks Act 1994 or if a third party objects on the grounds that your proposed registration is too close to his or her mark then your application is in trouble. Sometimes such objections can be resolved by negotiation. If not, they may go to a hearing before an official known as a "hearing officer". Should that happen, the costs will escalate sharply.

Tip #5: Consider IP insurance

IP litigation can be ruinously expensive, especially for small and medium enterprises.  You can insure against those costs by taking out specialist IP insurance before a dispute actually arises.

Tip #6:  Engage a Watch Service

A watch service looks out for applications that are similar to yours so that you can object to a third party's application and try to hammer out an agreement at an early stage. Leeds Business and IP Library offers a very cost-effective one. Several trade mark attorneys and other commercial organizations also offer watch services.

If you are still considering whether or not to register a trade mark or if you have applied to register a trade mark and hit any of those problems, call me on +44 (0)20 7404 5252 during office hours or send me a message through my contact form.