If you’ve recently registered your U.S. trademark, you may be wondering how to extend your trademark protections overseas. A trademark registered in the United Kingdom provides trademark rights and protections in England, Scotland, Wales, and Northern Ireland. Whether your online retail shop has customers in Glasgow, or you plan to open a brick and mortar shop in London, you may want to consider a U.K. trademark registration. As you plan your international trademark strategy, consider this following information about the costs associated with registering a trademark in the United Kingdom.
Overview of the Filing Process
When you are preparing to file your trademark in the United Kingdom, there are a few different options. One common option, especially if you plan to register in multiple countries, is the Madrid Protocol. This treaty allows a trademark owner to register internationally with any of its 90 member countries on a single application. While the Madrid Protocol streamlines the application process, it does not guarantee that your registration will be approved in the countries you’ve filed. You will pay a single application fee with the Madrid Protocol, but you need to factor in the registration costs of each country where your trademark is approved.
The Madrid Protocol’s application is extremely broad by nature, to cover the basics of each member country’s filing requests. Because of this, it is common for each individual trademark office to return to you with requests for additional documents or information. The European Union offers a similar process for its Community Trademark (CTM), which grants trademark rights to the 29 countries in the EU. Unfortunately, with the uncertainty of Brexit looming, it is recommended that trademark owners looking to register in the U.K. file directly with the IPO instead.
You may also choose to file directly with the Intellectual Property Office, or IPO, which serves as the U.K.’s trademark office. Doing this will allow you to fill out a trademark application specific to the needs and requests of the United Kingdom. Often filing directly with a country’s trademark office speeds up the registration process and increases your chances of approval, as much of the requirements are laid out in the individual application. If your international trademark plans include only the U.K. at this time, it is best to file directly with the IPO.
General Costs to Register in the U.K.
There are many fees associated with filing and maintaining an international trademark.
Common Government Fees for Trademark Filing and Maintenance in the U.K.
- Application Fee: £170 ($225.83) for online applications; £200 ($265.68) for paper applications
- Additional Classes (When requested by IPO): £50 ($66.42)
- International Fee: £40 ($53.14) plus additional WIPO fees
- Renewal Fees: £200 ($265.68)
- Notice of Opposition: £100-£200 ($132.84-$265.68) depending on the grounds for opposition
Many actions have no fee attached, including merging or dividing trademark registrations. To review a full list of costs, consult the IPO website.
Attorneys Fees Associated with Filing a Trademark in the United Kingdom
It should be noted for purposes of clarity, the above-noted fees do not include legal (attorney) fees for filing a U.K. application, tracking its progress, and responding to basic examination requests/questions, which are typically around $1,000.
Advantages to Working with an Attorney
Many budget-conscious business owners attempt to cut expenses by choosing to navigate international trademark registration without hiring an attorney. While this may save them money initially, the decision to work without an attorney may cost them much more in the long run. While it is possible to begin the registration process without an attorney, especially if one chooses to apply through the Madrid Protocol, it is almost always necessary to hire local counsel later on to communicate with the trademark office and complete the process. If the local attorney must assist you in re-applying for a trademark after a filing mistake, this will certainly end up costing you more than if you began the process with an experienced trademark attorney.
Working with a trademark attorney may likely increase your chance of approval as well. Your attorney will begin the registration process by completing a comprehensive trademark search. This will determine if any other businesses in the U.K. are using a confusingly similar mark. If you are made aware of an existing mark through the comprehensive trademark search, you can work with your attorney to decide the best course of action before you file your application. Failing to complete a comprehensive search prior to applying may be costly and time-consuming when you discover a similar mark has already been registered.
As you prepare to file register your trademark in the U.K., it is important to know the costs associated with the process. Many options affect the overall expense of your United Kingdom registration, from choosing to file through the Madrid Protocol to filing oppositions. It is best to work with a local trademark attorney to navigate the process and make your international registration run as smooth as possible.