5 Steps on Trademarking a Business Name in the UK

By Josh Gerben, Esq.

Once you’ve registered your business name with the United States Patent and Trademark Office, you may be considering international trademarks.  Because trademark protection is only granted in the countries in which your trademark is registered, it is important to have a strategic international trademark plan.  A trademark registered with the United Kingdom will provide protection in England, Scotland, Wales, and Northern Ireland.  Whether you have current customers in the United Kingdom or you plan to expand there in the future, it is a good idea to trademark your business name in the UK since it is such a common trading partner with the United States.  Consider these 5 steps when registering your trademark in the United Kingdom.

1. Consider the Madrid Protocol or an EU Registration

The Madrid Protocol allows trademark owners to complete a single application which can then be applied to over 90-member countries, including the United Kingdom.  While the Madrid Protocol may lower the initial cost of the application process, it does not speed the process to register, especially in the UK, which currently has one of the fastest registration processes.  Also, any application filed through the Madrid Protocol would be completely dependent on your US trademark being registered (and maintaining that registration).  If your US registration is canceled, any countries that you have obtained a registration through the Madrid Protocol will likewise cancel your registrations. The Madrid Protocol is best used if you are planning to file in a long list of countries.  If the UK is a particularly important market for your company you should consider a direct filing to get the registration quicker, and, to avoid having the fate of your UK registration tied to that of your US registration.

The European Union also offers a one-application option.  The Community Trademark, or CTM, currently gives trademark owners trademark protections in the 28 countries that make up the European Union.  When applying to a CTM, registrants pay only one fee, instead of a fee for each individual country, making it a cost-effective way to register in Europe.  Unfortunately, given the political uncertainty surrounding BREXIT, trademark holders would be smart to file in the UK directly as well as filing for the broader “Community Trademark.”.

2. Work With a Trademark Attorney

It can be challenging to manage international trademark filings, especially if you are trying to register in more than one foreign country. While there are many similarities in trademark laws by country, there are also plenty of differences.  Working with an experienced trademark attorney can help you navigate the process to trademark your business name in the UK.   If you have worked with a US trademark attorney for your initial trademark filing in the US, that attorney will many times have relationships with UK based attorneys as well and can help you navigate the process.

You may notice other websites claiming to assist you with a do-it-yourself approach to filing, but the savings by going DIY may cost you more in the long run.  It is important to note that trademark search software or websites offered for free to the public are not comprehensive enough to detect all similar marks.  The same applies to monitor services intended to alert you if your trademark has been used without your permission.  In both cases, the tools available to trademark attorneys are much more sophisticated, and you can rest assured that your searches and monitoring are thorough and conclusive.

3. Complete a Trademark Search

Completing a trademark search in the United Kingdom is an essential step in trademarking your business name. Again, it is strongly recommended that you work with a trademark attorney to complete your initial search. Most trademark disputes arise, not from exact matches to a mark, but to marks that may provide a likelihood of confusion in the marketplace. A free online search is likely to locate only exact matches, leaving you vulnerable to infringement in the future.

If you and your attorney determine that your trademark, or something confusingly similar, is already registered, you could still have a path to registration. Unlike the United States, the UK may approve your trademark registration, even if it matches an existing trademark. However, the current trademark owner would be notified and could oppose your registration. Speak with your attorney you decide on the best course of action. It is often advantageous to make changes to your United Kingdom trademark before filing. This could avoid any lengthy opposition proceedings in the future.

4. Register with the UK Intellectual Property Office

Once you’ve completed a comprehensive trademark search in the United Kingdom, the process to apply for a trademark is quite simple:

• Apply directly with the United Kingdom Intellectual Property Office, or IPO.
• An examiner will review your application. This process takes approximately six months.  The examiner may raise objections if there are:
  • Absolute grounds for refusal—if the trademark is too generic or descriptive, or if it is deemed offensive
• If the examiner has no objections, the registration will go to publication. During this time, anyone with an existing similar mark will be notified of your registration.  It is the responsibility of the trademark owner to oppose the mark during the publication period.
• If there are no oppositions, the IPO will issue a Registration of Certificate.

5. Maintain Your Trademark

In order to have a strong UK trademark, you must consistently and effectively use the mark. Once your trademark has been registered with the IPO, you can begin using the ® symbol. Use this where ever your business name appears, as well as any other trademarks you may have registered, including logos or slogans. This not only adds a level of validity to your potential customers, but it also puts the general public on notice for using the mark without authorization.

In the United Kingdom, it is possible for a confusingly similar mark to be registered while yours is in use. If a similar mark is filed, the Register at the IPO will notify you during publication. However, it is your responsibility to take action and file an opposition against the mark. Failing to do so could weaken your mark significantly. In addition, be sure to renew your trademark by the deadlines set by the IPO. Your trademark does not expire, but renewals occur every ten years.

In today’s global economy, it is not farfetched to assume that a business in the United States will have reach in the United Kingdom. To protect your business name in England, Wales, Scotland, and Northern Ireland, you must register your mark in the UK. Understand the advantages—and disadvantages—with registering through the European Union or Madrid Protocol. Work with an attorney to complete a comprehensive trademark search and file your trademark. Once you receive your Certificate of Registration, it is up to you to maintain it. Monitor the use of your trademark, and respond to any opposition notices sent to you by the IPO. Knowing and using your trademark protections is a critical part of your business success in the United Kingdom.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.