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A Guide to Trademark Registration

The importance of a trademark and the process of registration

  • 01

    Businesses spend a lot of money in developing a brand and often forget to register the logo or design.

    As part of good practice, it is essential that a business protect its intellectual property by registering their logo or design.

    This Guide will take you through the process of registration. However, it is essential that you enter the registration process by using the services of a specialist Trademark Agent.

    To further help you, Acumenology has produced a series of Business Guides on a range of relevant topics.

    You can find these at: www.acumenology.co.uk/business-guides

  • 02
    What is a Trademark?

    A Trademark is a logo or design that distinguishes your product or service offering from your competitors.

    It is an essential marketing tool that is used in your commutation to customers to build recognition.

    A Trademark includes words, logos, images and/or a combination thereof.

  • 03
    Why is it important to register a Trademark?

    By registering your logo as a Trademark, it prevents other parties from using a similar Trademark for identical goods or services without your consent.

    This adds value to your business.

    If your business needs to raise funding from external sources, investors will as part of their Due Diligence inevitably ask if the product/service name and logo has been Trade Marked and registered.

  • 04
    The first step

    The first step in a Trademark registration is to complete a Trademark Search.

    This eliminates the risk that the chosen trademark is not already registered or is similar to a previous registration.

  • 05
    What is a Trademark search?

    A Trademark Search is a vital part of the registration process that reveals whether the proposed mark is capable of registration.

    The search shows whether an identical or similar mark is registered in the same or similar category to your business.

    If you fail to carry out a search you increase the risks of losing all fees attached to the application.

    A search is carried out in the relevant databases to identify any existing identical or similar Trademark.

    The three types of Trademark Searches are:

    Word – Word & Logo – Logo only. The search should take typically take approximately 48 – 72 hrs.

  • 06
    Trademark registration

    When applying to register your Trademark you must ensure that the goods/services are registered in all classes that you wish to trade within.

    There are 45 classes are split into two parts.

    Class 1-34 are for the registration of goods, class 35-45 are for the registration of a service.

    A list of these classes appears in the Appendix 1.

  • 07
    What is a Community Trademark?

    A Community Trademark (CTM) provides protection for a mark in all 28 European Community member states including:

    Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, United Kingdom.

  • 08
    What is the international Trademark?

    This is a Trademark registered with the World Intellectual Property Organisation (WIPO) under an International agreement, the Madrid Protocol.

    It enables applicants/ owners of trademark applications/registrations of a particular country to extend protection to their marks to other member countries.

    There are currently 66 signatories to this agreement.

    Both a UK national mark and a CTM are members of WIPO and can be used to apply for registration in other countries. India is not a member of the Protocol.

    Filing an International Trademark simplifies the process of registering a trademark in multiple countries by circumventing the need to file application in each individual country.

    It is possible to set up an application by designating one country and then adding another country to your list at a later date.

    It also makes such registrations easier to maintain as only one application will be needed when it comes to renewal.

  • 09
    How long does it take to register a trademark?

    Length of registration is dependent on the amount of work but as a rule one can work on the following basis.

    UK: 5 – 8 mths; EC: 12 – 18 mths; International: 18 – 24 mths.

    Once registered, a Trademark continues indefinitely, on the payment of a renewal fee every 10 years, provided that it does not remain unused for a continuous period of 5 years and a renewal fee is paid every tenth anniversary of the filing date

  • 10
    What should I do?

    Now that you are familiar with the Trademark process it is recommended that you use the services of one of the many specialist Trademark agents.

    They will advise you and handle the entire process of your behalf.

  • 11

    If developing a strong brand is a critical part of your business then it is essential that you Trademark your name and logo, especially if you are likely to raise funding from external investors. It is a relatively straightforward process and is best handled by Trademark agents for peace of mind.

    Acumenology has produced a series of Business Guides on a variety of topics relevant to starting and running a business.

    These can be found at: www.acumenology.co.uk/business-guides

  • 12

    Trademark classification list

    Registration of Goods

    Class 1. Chemical products used in industry, science and agriculture

    Class 2. Paints, colorants and preparations used for protection against corrosion.

    Class 3. Cleaning preparations and toilet preparations.

    Class 4. Industrial oils and greases, fuels and illuminates.

    Class 5. Pharmaceutical and other preparations for medical purposes.

    Class 6. Common metals as well as simple products made from them.

    Class 7. Machines, machine tools, motors and engines.

    Class 8. Hand-operated implements used as tools in the respective professions.

    Class 9. Technological apparatus.

    Class 10. Medical apparatus, instruments and articles.

    Class 11. Apparatus for lighting, heating, steam generating, cooking, refrigerating.

    Class 12. Vehicles and apparatus for locomotion by land, air or water.

    Class 13. Firearms, projectiles and explosives, ammunition and fireworks

    Class 14. Precious metals, goods in precious metals and precious stones

    Class 15. Musical instruments.

    Class 16. Paper, goods made from paper and office requisites.

    Class 17. Rubber, gum, asbestos, insulating materials and non metal flexible pipes

    Class 18. Leather, leather imitations and travel goods not included in other classes.

    Class 19. Non-metallic building materials.

    Class 20. Furniture and its parts and plastic goods not included in other classes.

    Class 21. Hand-operated utensils and apparatus for household and kitchen use as well as toilet utensils, glass ware and articles in porcelain.

    Class 22. Rope and sail manufacture products, padding, net and string.

    Class 23. Yarns and threads for textile use.

    Class 24. Textiles (piece goods) and textile covers for household use.

    Class 25. Clothing footwear and headgear.

    Class 26. Dressmakers’ articles.

    Class 27. Products intended to be added as furnishings to previously constructed floors and walls.

    Class 28. Games and playthings.

    Class 29. Meat, vegetables and other horticultural comestible products

    Class 30. Foods of plant origin prepared for consumption or conservation

    Class 31. Land products not having been subjected to any form of preparation for consumption.

    Class 32. Non-alcoholic beverages, as well as beer.

    Class 33. Alcoholic beverages (except beer).

    Class 34. Tobacco smokers’ articles matches.

    Registration of Services

    Class 35. Business management and business administration.

    Class 36. Insurance and financial services.

    Class 37. Building construction services.

    Class 38. Communication services.

    Class 39. Transport services.

    Class 40. The treatment of materials.

    Class 41. Education, training, sports and entertainment.

    Class 42. Scientific and technological services.

    Class 43. Catering an temporary accommodation services.

    Class 44. Medical services

    Class 45. Personal and social services.

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