A complete overview of the application process of a trade mark, allowing you to be clear of the process and know what to expect.
Stage 1- Development
The first stage, may be obvious for some, however you need to firstly establish your brand before you apply for a trademark. You need to be entirely happy with the branding of your mark. This is because your trademark cannot be changed once the application has been made and will be used to represent your brand in years to come. It must be unique and allow customers to identify you over competitors.
A mark must be capable of graphical representation, distinctive, not descriptive of any aspect of the business and must not conflict with any existing marks.
Stage 2: Trade Mark Search
Arguably, one of the most important stages in a trade mark application is the completion of a trade mark search. By completing a trade mark search, you can save both time and money.
A trade mark search in short, gives you an idea how the intellectual property office (hereinafter referred to as IPO) will receive your mark and whether there are any conflicting marks out there that could be a problem to your mark. Problematic marks could have similar or identical goods and services, or be similar to your mark visually/phonetically.
You do not want to waste time and money submitting an application that can be halted by an existing mark which could be easily found in a search.
Here at the Trademarkroom we offer two levels of searches. These range from a basic search which gives you a general idea. However, we recommend the completion of an advanced search. The advanced search gives you both an advice report and detailed search results, looking at both registered and unregistered rights.
Stage 3: The Trade Mark Application
Once you are entirely happy with your trade mark and have completed the necessary searches, it is now time to submit the application. The application can be submitted to the IPO either online or paper form.
Here at the Trademarkroom, we complete this stage for you and communicate with the IPO.
Stage 4: Examination stage
An IPO examiner will conduct their own search on your trade mark once it has been filed. This includes observing whether the mark is descriptive and capable of being a registered trade mark. They will only look at Absolute grounds.
Usually within 21 days we will receive a communication from the IPO with regards to your mark and be notified if there are any issues. If there are issues rise you have a 2 months grace period in order to make any necessary amendments.
If the examiner is satisfied that your mark does have the elements of a successfully constructed trade mark, your application will move on to the final stage.
Stage 5 Publication and Oppositions
Once the examiner is happy with your mark, it will pass onto the final stage whereby your trade mark will be published into a journal. Within this publication period other trade mark owners can choose whether or not to oppose your mark. If you are faced with a potential opposition there are routes that can be taken to ensure this is dealt with. These include: withdrawing your application, contact the opposer for an amicable decision. Here the application can be refused if the opposition is successful, or your mark will proceed to being filed. If your mark is successful then your mark will be added to the Trade Mark Register.
You will then be granted protection for 10 years and be issued with a certificate.
If you want to start this process, The Trademarkroom are awaiting your call to kickstart the protection of your brand.
Anna Orchard
