FAQs

Choosing a Trade Mark is a difficult business in itself, and registering a Trade Mark is another minefield of information to take on board. Trade Mark Wizards® is committed to providing the best possible information to you, our clients, so you can start a successful application by making a fully informed decision.

Here is a set of Frequently Asked Questions that contain the basic information for anyone considering applying for a Trade Mark. Just use the filters at the top of the list of questions to make your life easier in finding the relevant topics.

Of course, we will be regularly updating this list and topics so please re-visit. Also, as users of our website, we would welcome your thoughts on making this page as useful as possible, so feel free to get in touch!

What date do registered rights stem back to?

Your registered rights will stem back to the filing date of your application, so any third party that has been using a conflicting mark since that date may be infringing your legal rights. This means that you may have a trade mark infringement claim against that third party.

This is reason why it is advisable to apply for your trade mark at the earliest opportunity.

What is the difference between the ™ and ® symbols and when can they be used?

The ™ symbol indicates that your sign is being used as a badge of trade origin, whereas the ® symbol indicates that your sign is in fact a registered Trade Mark.

The ® symbol is usually attached to a sign to demonstrate to third parties and competitors that the mark has been registered, which also signifies that any unauthorised use of an identical or similar mark will result in the enforcement of those registered legal rights by the registered Trade Mark owner.

The ™ symbol might be used by businesses that don’t have registered Trade Marks [perhaps they can’t afford them or their applications have been refused]. Alternatively, businesses might use the ™ symbol when their Trade Mark is still in the application process pending registration.

A common reason to use the ™ symbol is when a Trade Mark has been refused on “inherent registrability” grounds, perhaps because it is non-distinctive, descriptive or generic. The business is then left to embark on a strategy to prove that the Trade Mark has “acquired distinctiveness” over time, and therefore uses the ™ as part of that strategy.

Businesses have to be very cautious when using the ™ symbol when they do not own a Trade Mark registration because of the risk of inviting malicious third parties to file the Trade Mark themselves.

When you eventually decide to apply for a Trade Mark, and find out that a third party owns the registration, this can cause huge problems. It can also mean that you have to incur significant expense in actually obtaining a Trade Mark registration for your company, which may not even be possible due to the existence of the earlier registration.

Please be aware that it is a criminal offence to indicate that a Trade Mark is registered when it is not.

Can I sell or transfer my Trade Mark to someone else?

Yes you can. A Trade Mark is a property right which can be bought or sold or even given to someone as a gift. When you transfer the Trade Mark to somebody else, this must be done through an “assignment” mechanism. If the Trade Mark is registered, the assignment must be recorded at the relevant Trade Marks registry.

How long does a Trade Mark registration last?

First and foremost, there is no magical registration that protects your Trade Mark all over the world. Trade Mark rights are essentially national and territorial rights.

An International Registration is a mechanism that allows Trade Mark protection to extend to other countries who are a party to the Madrid Protocol or the Madrid Agreement.

The International Registration system is administered by the World Intellectual Property Organisation (WIPO) and this system simplifies the process of registering a Trade Mark in several member countries by avoiding the need to file direct national applications in each country separately. Instead, you can use your “home” application or registration as a basis to file an International Registration and then “designate” the countries or territories that you wish protection to be extended into.

After the WIPO formalities have been completed, the Trade Mark then goes through the national application process in the member countries designated.

What is an International Registration?

First and foremost, there is no magical registration that protects your Trade Mark all over the world. Trade Mark rights are national rights.

An International Registration is a mechanism that allows Trade Marks protection to extend to other countries who are a party to the Madrid Protocol or the Madrid Agreement.

The International Registration system is administered by the World Intellectual Property Organisation (WIPO) and this system simplifies the process of registering a Trade Mark in several member countries by avoiding the need to file an application in each separate country. Instead, you use your home application or registration to file as an International Registration and then designate the countries that you wish protection to be extended into.

After the WIPO formalities have been completed, the Trade Mark then goes through the national application process in the member countries.

What if I am only interested in a few EU countries?

EU Trade Mark registrations are unitary and cover the whole of the EU. It is not possible to pick and choose the countries you wish to cover. If you are only interested in one or two countries it may be cheaper to file national applications or, if there are several countries, an International Registration under the Madrid Protocol designating the counties of choice.

What is an EU Trade Mark Registration?

An EU Trade Mark (EUTM) is a unitary Trade Mark that covers the entire EU and provides protection in all 28 Member States, namely:

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

It must be noted that objections to an EUTM can be raised by proprietors of earlier conflicting rights in any EU Member State and therefore, at the very least, a Regional Identical Screening Search [see our searching packages] should be conducted before an EUTM application is filed, to ensure that any obvious obstacles to a smooth application are identified.

Once a Trade Mark has been registered, can I alter it?

No. Once a Trade Mark application has been filed it is not possible to change the Trade Mark as it appears on the register in any way. You will need to file a new application to protect the new versions of the mark.

Nor is not possible to extend the application to cover more goods or services. Again, a further application will be necessary to cover such extra goods or services. When you apply the first time you should consider the likely future scope of your business so that you can be certain that your application will adequately cover your immediate and future business activities.

How long does the Trade Mark registration process take in the UK and EU?

If a UK Trade Mark application does not meet with any official objections or third party oppositions, the process can take around 4-6 months, depending on the UKIPO’s workload and the size and complexity of your specification of goods and services.

For EU Trade Mark (EUTM) applications the process is slightly longer because of translation issues and a longer opposition period. If there are no official objections or third party oppositions, we anticipate a registration within 5-8 months.

What are trademark classes?

For administrative purposes, and to assist with searching, different goods and services are grouped into 45 classes. The class(es) required by your application will depend on the goods and/or services on which the trademark is to be used. We will advise you as to the appropriate classes required.

Class 1

Chemicals used in industry, science, photography, agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; carbon; catalysts; cellulose; compost; coolants; fertilisers.

Class 2

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; anti-rust oils; dyes; ink for leather; lacquers; printing ink.

Class 3

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; after-shave lotions; antiperspirants; bath salts; beard dyes; beauty masks; bleaching salts; boot polish; breath freshening sprays; cake flavourings; cosmetics; eau de cologne; essential oils; false eyelashes, hair and nails; floor wax; hair colorants; hair spray; perfumes; soap; toiletries.

Class 4

Industrial oils and greases; Lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting; beeswax; benzene; coal; combustible oil; diesel oil; gas oil.

Class 5

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; medicated skin care and body care substances; sponges; antiseptic and medicated wipes; drugs for medical purposes; naturopathic and homeopathic preparations and substances; vitamins; fortified beverages and juices; medicinal teas; health supplements; substances and preparations for promoting weight loss; mineral drinks; food for babies; pain killers; tapes, bands, plasters and cotton preparations for medical use.

Class 6

Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; aluminium foil; anchors; armour plating; bells; bolts of metal; bronze; nails; padlocks; rivets of metal; safes; tin cans; vats of metal; wire cloth.

Class 7

Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines; axles; ball-bearings; beer pumps; belts for motors and engines; bending machines; blowing engines; bulldozers; carburettors; centrifugal machines; coffee grinders; drills; dynamos; escalators; engines; hoists; jet engines; knitting machines; looms; mangles; millstones; motors; moulds; ploughs; printing machines; pulleys; robots; transmission shafts; valves; vending machines; waste disposers; wind turbines.

Class 8

Hand tools and implements (hand-operated); cutlery; side arms; razors; axes; beard clippers; chisels; cutters; drills; files; grindstones; guns; hand pumps; jig-saws; manicure sets; screwdrivers.

Class 9

Scientific, nautical, photographic, cinematographic, optical, weighing, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; recording discs; digital recording media; mechanisms for coin-operated apparatus; cash registers; data processing equipment; computers; computer software; aerials; alarms; amplifiers; audio-visual teaching apparatus; automated teller machines; bar code readers; batteries; cables; cameras; central processing units; clocks; computer peripherals; data processing apparatus; DNA chips; eyeglasses; fuses; headphones; integrated circuits; juke boxes; lights; magnets; modems; neon signs; radios; sunglasses.

Class 10

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; acupuncture needles; aerosol dispensers for medical purposes; ambulance stretchers; anaesthetic masks; artificial body parts, namely, breasts, eyes, jaws, limbs and teeth; babies’ bottles; bed pans; breast pumps; catheters; crutches; defibrillators; dentures; hair prosthesis; inhalers; massage apparatus; needles for medical purposes; nursing appliances; pulse meters; trusses; x-ray apparatus for medical purposes.

Class 11

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning apparatus; air sterilisers; alcohol burners; automobile lights; barbeques; bath installations; ceiling lights; coffee machines; cookers; cooking apparatus; installations and utensils; disinfectant apparatus; sterilizers; tobacco roasters; ventilation hoods; water-pipes for sanitary apparatus.

Class 12

Vehicles; apparatus for locomotion by land, air or water; air balloons; air vehicles; automobiles; baby carriages; bicycles; boats; cars; chairlifts; engines for land vehicles; golf carts; lorries; mopeds; motor homes; motorcycles; ski lifts; sleighs; tilt trucks; tractors; tricycles; turbines for land vehicles; vans; wheelchairs; yachts.

Class 13

Firearms; ammunition and projectiles; explosives; fireworks; automatic firearm ammunition belts; ballistic weapons; cannons; detonators; fog signals; gunpowder; hand grenades; mines; missiles; shoulder straps for weapons; tear-gas weapons.

Class 14

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; alarm clocks; beads for making jewellery; busts of precious metals; coins; diamonds; gold, unwrought or beaten; medals; pearls; platinum; silver; tie clips; watches.

Class 15

Musical instruments; accordions; bagpipes; castanets; clarinets; drums; guitars; harps; mandolins; oboes; pianos; saxophones; trombones; violas; xylophones; zithers.

Class 16

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; albums; atlases; blackboards; bookends; books; calendars; cards; clipboards; ink; lithographs; stationary.

Class 17

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses not of metal; non-metallic pipe and tube connections, couplings, extensions and fittings; drip watering emitters.

Class 18

Leather and imitations of leather and goods made of these materials; animal skins, furs; luggage, travelling bags and suitcases; umbrellas, parasols, canes and walking sticks; harness and saddlery; bags, leashes, muzzles, all for animals; animal covers.

Class 19

Building materials and constructions; frameworks and structures; non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; floors and flooring; ceilings; cladding; doors and gates; fences; shelves and shelving, including mobile storage racking; all the foregoing goods being predominantly non-metallic.

Class 20

Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21

Household, kitchen, and bathroom utensils and containers; drinking vessels; containers and dispensers for beverages, cosmetics, cleaning materials, toilet and cosmetic utensils; sponges; tableware, bins, bowls; boxes; jars; pots, pans, mugs, dishes; non-electric and electric toothbrushes; dental floss; tissues and wet wipes and moist wipes for cleansing purposes; scratching posts for cats; dog kennels.

Class 22

Ropes; string; nets and network; tents; awnings; tarpaulins; sails; sacks, bags, envelopes and pouches of textile material for packaging; air beds; hammocks; raw fibrous textiles.

Class 24

Textile materials and textile goods, non-woven textile fabrics; cloth; fabrics for textile use; cotton fabrics; filtering materials; plastics substitute materials for fabrics; cloth; buckram, calico, cheese cloth, gauze, badges of textile fabric, labels, flags, pennants, bunting, banners, duvets, duvet covers; household linen; bedspreads, sleeping bags.

Class 25

Articles of clothing, including waterproof and water-resistant clothing; footwear, headgear; babies’ wear, men’s wear, ladies’ wear; rainwear, snow suits, swimwear, wristbands, headbands; costumes, including masquerade costumes; ear muffs, gloves, mittens; socks, stockings and hosiery;  protective and safety footwear, headgear and gloves.

Class 26

Lace and embroidery, ribbons and braids; bands; tinsels; belt clasps; boxes; brooches; buckles; fancy goods; buttons, hooks and eyes, pins and needles; artificial flowers and plants; tie pins; badges; ornaments; decorative patches; hair, false hair, hair extensions, hair tresses, toupees, curlers and curling pins, colouring caps, all for the hair; implements and appliances for hair waving and styling.

Class 27

Floor coverings; carpets; rugs; mats; linoleum and vinyl floor coverings; wallpaper; wall hangings; artificial turf, including artificial grass and bowling greens.

Class 28

Toys, games and playthings; dolls; furniture, clothes, houses, feeding bottles and accessories; rocking horses; scooters; radio-controlled toys; board games; playing articles for swimming pools; self-contained electronic games and instruments; computer games; gymnastic, exercise and sporting articles; surfboards and surf skis; hang gliders; ice skates, roller skates; skateboards; golf bags; balls.

Class 29

Meat, fish, poultry, game; meat extracts; raw and cooked fish and fish products for food; sushi; dried, boiled, frozen and cooked fruits and vegetables; vegetable and fruit spreads and pastes; fruit jellies; mixtures of vegetables and herbs; jellies, jams, fruit sauces; milk and milk products; nuts; cakes, snacks, chips; savoury food products; food supplements and food additives for use as slimming aids or for bodily fat reduction.

Class 30

Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; sugar, honey, treacle; spices; ice; honey; sauces and gravies; spice mixes; cooking sauces and cooking pastes; pizzas;  ice beverages; syrups; cooked meals in this class, including frozen cooked meals and prepared meals; preserved, dried, cooked, processed and frozen preparations, all for making meals.

Class 31

Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt; horticulture and forestry products; food supplements for animals; food supplements made from algae; grains; fresh fruits and vegetables; seeds, almonds, nuts, malt, kernels, legumes, drupes, pods, peanuts.

Class 32

Non-alcoholic beverages; low alcoholic beverages containing not more than 1.2% by volume of alcohol; beers; ales; porter; lager; carbonated beverages; soft drinks; water; sport drinks; cider; fruit and vegetable drinks and fruit and vegetable juices; non-alcoholic and low-alcoholic aperitifs and cocktails; preparations for making any of the aforesaid goods.

Class 33

Alcoholic beverages; alcoholic essences; alcoholic extracts; anise; anisette; liqueurs; wines, including tonic wines;  rum; mead; perry; spirits; vodka; absinthe; tequila; gin; brandy; curacao; kirsch; sake; whisky; cocktails; aperitifs; fruit drinks containing alcohol; alcopops; cider; bitters; distilled beverages; alcoholic fruit extracts; tea and coffee beverages containing alcohol; preparations for making the aforesaid goods.

Class 34 

Tobacco; tobacco products; tobacco substitutes; smokers’ articles; lighters; matches; pipe tobacco, tobacco pipes, snuff; cigarette papers.

Class 35

Advertising, including search engine optimisation; on-line advertising; marketing services; digital marketing strategy; direct market advertising; copywriting services for marketing and advertising; sales promotion services; providing statistical information; organisation of exhibitions; storage, archiving, management and analysis services; data security and  verification services; office services; employment and recruitment services; personnel management; market research and study services; advisory and consulting services relating to any of the aforementioned services.

Class 36

Financial affairs; monetary affairs; administration of financial affairs; trustee services; cash management services; loan services; credit services; credit card services; currency services; credit strategy services; information services relating to finance and credit provided online financial advice, analysis and management; share, stock and bond dealings; charitable fund raising; real estate management and appraisal services; information, enquiry, advisory and consultancy services relating to any of the aforementioned services.

Class 37

Building construction; installation, renovation, repair and maintenance services;s maintenance and repair of motor vehicles and parts and fittings thereof; plumbing services; mending, repairing, refurbishing, stain removing, renovating and alteration services for articles of clothing; fitting, repair and maintenance of kitchens, bedrooms, living rooms, bathrooms, toilets, windows, doors, conservatories, electric appliances and equipment, repair and maintenance of scientific apparatus and instruments and of computer installations, computer software.

Class 39

Transport; packaging and storage of goods; travel arrangement; aircraft rental; arranging of tours; delivery of goods; freighting; hauling; marine transport; piloting; railway transport; salvage of ships; storage; taxi transport; vehicle rental; warehousing.

Class 40

Treatment of materials; abrasion; air freshening and purification; bookbinding; cloth dyeing; destruction of waste; embroidery; fabric bleaching, fireproofing and waterproofing; flour milling; food and drink preservation; gold-plating; key cutting; laminating; leather working; metal casting; paper finishing and treatment; recycling; slaughtering of animals; taxidermy; woodworking.

Class 41

Education; providing of training; entertainment; sporting and cultural activities; academies; amusement parks; arranging and conducting of colloquiums, concerts, conferences, congresses, seminars, symposiums and workshops; boarding schools; camp services; circuses; disc jockey services discothèque services; dubbing; education information; education examination;  gambling; holiday camp services; instruction services; lotteries; night clubs; orchestra services; organisation of balls, competitions, exhibitions and shows; party planning; physical education; radio entertainment; television entertainment; toy rental; videotaping.

Class 42

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; architectural consultation; architecture; biological research; chemical analysis and research; cloud computing; computer programming; computer software design; cosmetic research; engineering; geological research; industrial design; maintenance of computer software; oil-field exploitation and surveys; providing search engines for the internet; rental of web servers; surveying; weather forecasting.

Class 43

Services for providing food and drink; temporary accommodation; bar services; cafes; canteens; hotels; motels; rental of tents; restaurants; retirement homes; tourist homes.

Class 44

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; animal breeding; beauty salons; dentistry; flower arranging; gardening; hairdressing; health care; health spa services; hospices; massage; medical assistance; opticians’ services; pharmacists’ services to make up prescriptions; plastic surgery; psychologists; tattooing; tree surgery; veterinary assistance.

Class 45

Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; adoption agency service; arbitration services; baby sitting; chaperoning; clothing rental; dating services; fire-fighting; funerals; guards; horoscope casting; intellectual property consultancy; legal research; mediation; registration of domain names.

Is a Trade Mark registration necessary in order to protect a brand?

No. A Trade Mark registration is not absolutely necessary to protect your brand. However, unregistered rights are very difficult to enforce and they carry an extremely high evidential burden when proving that you have sufficient grounds to establish and support a passing-off action.

To enforce unregistered rights you need to prove [a] that you have a reputation or own goodwill in a name, [b] that the other party’s use of an identical / similar name is a deceptive misrepresentation, and [c] that there is a serious likelihood of damage or that actual damage has been suffered.

Enforcing unregistered rights is an extremely expensive exercise compared to simply enforcing a Trade Mark registration. Allegations of passing-off are usually taken with a pinch of salt if the party in the wrong believes the owner of the goodwill cannot afford to commence an expensive passing-off action. This is not the case with registered Trade Mark protection, where threats of infringement are taken much more seriously because the legal rights obtained are much stronger.

What types of things can be registered as Trade Marks

A Trade Mark can be any sign that is capable of being represented graphically that is used to distinguish the goods and services of one business from those of another business.

Such signs can include, words, symbols, designs, letters, numerals, a slogan, a shape, a colour or a combination of colours, packaging etc.

Is a Trade Mark Search necessary?

Although a Trade Mark search is not compulsory, it is strongly recommended if you are thinking about adopting a new brand.

The purpose of the search is to ascertain whether or not your proposed Trade Mark is available for use and registration and in particular whether there is any potentially conflicting Trade Mark right already on the Trade Mark Register.

Apart from allowing you to manage your expectations through the application process, a Trade Mark search will identify the risks of infringing another party’s earlier rights and so could save you a lot of money and hassle in the long run.

Why is a Full Clearance Search important for new brands?

Conducting a full clearance search is a fundamental first stage of ensuring a mark is available for use and registration. Clearance searching is an important step to take when launching a brand and it ensures you can determine the availability of your proposed Trade Mark for use and registration, with confidence.

Our availability searches seek to target and find identical Trade Marks, variant spellings, phonetic equivalents, and confusingly similar marks – all of which can challenge the use and registration of your chosen Trade Mark.

If you are planning to sell or provide products and services under a brand name, it makes legal and commercial sense to have certainty that your Trade Mark does not conflict with existing Trade Marks.

Every business takes risks and conducting the full clearance search allows you to define your risks precisely and with clarity.

Why is a Full Clearance Search important for existing brands, before an application is filed?

Let’s say your brand is already in use and you now sensibly decide to ensure that the goodwill and reputation generated in the name is crystallised and protected by way of a registered Trade Mark.

A Full Clearance Search often highlights a number of earlier marks which pose at least a ‘technical’ obstacle to a successful registration. In other words, there will often be a number of overlapping earlier rights, all of which could be used by their owners as the basis for objecting to your Trade Mark application, regardless of the fact that you trade in different goods and services.

Once we have identified these conflicting earlier rights, we can provide you with a Trade Mark filing strategy to ensure that, having assessed the technical risks posed by such earlier rights, there are technical ways to overcome them.

We can then devise a way to register your mark with the lowest risk of encountering objections from the owners of earlier rights and therefore ensure you do not incur unnecessary expenditure in addressing third party challenges in order to promote effective resource allocation for your business.

It is very important that you are not faced with objections that can be avoided. This can be achieved quite easily by simply having a focused filing strategy before you begin your journey through the application process. You can also ensure there are no delays to registering your Trade Mark by avoiding lengthy opposition proceedings.

What is an “C.I.S.S.” / Configurable Identical Screening Search?

This search is highly recommended before a decision is made to file an International Trade Mark, in order to identify the number of identical earlier Trade Marks applied for, or protected in, the jurisdiction(s) you seek protection, which may cause an obvious and high risk obstacle to the use and successful registration of your Trade Mark in your selected jurisdiction(s).

This search will provide you with statistical data regarding the number of identical Trade Marks that have been filed by third parties in the jurisdiction(s) you seek protection. In the event that your Trade Mark is a compound mark, that is to say, a mark containing two or more different words, this search will provide you with statistical data for each of the words registered as Trade Marks in the jurisdiction(s) you seek protection.

This search will be tailored to the classes that are of particular relevance to your business and to the brand you wish to protect as a Trade Mark.

If you wish to search for identical Trade Marks in more than 8 jurisdictions please have a look at our Worldwide Identical Screening Search which includes all available jurisdictions worldwide at a capped price.

Does conducting a Full Clearance Search increase the value of my brand?

Yes, it certainly does. Conducting a Full Clearance Search before a Trade Mark Application is filed increases the value of your brand significantly because you can provide assurances to prospective purchasers and investors that you have secured exclusive legal rights in the name by undertaking a comprehensive and thorough due diligence exercise.

You can also provide assurances that no third parties can challenge your registration on the basis of earlier registered rights, which makes the brand more attractive to licensees, distributors and franchisees and they can be certain that selling goods or providing services under your Trade Mark will not any create exposure to a potential Trade Mark infringement claim against them. The additional confidence you create in your brand increases its value.

What does “Guaranteed Registration” mean?

We only Guarantee a registration if we have been instructed to carry out a “Full Clearance Search & Analysis”, and then subsequently provide an “all clear” report.

Our firm will provide you with a full refund of our firm’s professional fees incurred in searching, preparing and filing the application, dealing with the examination report, and dealing with the opposition of your Trade Mark, in the event that:

  1. We advise you to withdraw your application on the basis of an objection during the Examination stage of the application process; or
  2. Your Trade Mark application is refused for all marks in the series on appeal during the Examination stage in respect of your core goods and services; or
  3. We advise you to withdraw your application on the basis of an earlier right which was cited in the full clearance search but was not regarded as an obstacle to registration by us; or
  4. Following an official decision in opposition proceedings, your Trade Mark application is refused for all marks in the series in respect of your core goods or services sought for registration on the basis that it conflicts with an earlier right cited in our clearance search and we advise you not to appeal the decision; or
  5. Following an official decision from the Appeal Tribunal, your Trade Mark application is refused for all marks in the series in respect of your core goods or services sought for registration on the basis that it conflicts with an earlier right cited in our clearance search.

If we provide you with an “all clear” search report, we guarantee that we are able to overcome any objections or challenges from the UK Intellectual Property Office, or other third parties and owners of earlier rights that were found in our search report at the time the full clearance search was carried out.

In the event that you do not provide us with instructions and relevant information by the deadline we provide or in the even that you decline to proceed in accordance with our recommended course of action, our guarantee will be terminated.

What does “Guaranteed Publication” mean?

Once a Trade Mark has been filed, it must undergo a thorough Examination to see if it meets the formality requirements of the Registry and only once the Examiner is satisfied that there should be no objections, the application will be “published” and move to the next stage of the application process.

Official objections during the Examination stage can take various forms, which include refusals being issued on the basis that a particular Trade Mark is non-distinctive, descriptive in some way of the goods and services in the application, or generic. Other objections can be raised at the Examination stage which relate to the series of marks and incorrectly described claims or ambiguous terminology.

Such Official objections can prevent a Trade Mark application from reaching the Publication stage of the application process.

If we provide your application with a guarantee to pass the Examination state, and the application does not proceed to publication, we will refund our professional fees for filing the application.

Can you explain your payment mechanism for Trade Mark applications in more detail, in particular, when packages are purchased, why do you take two separate payments?

The reason is simply to ensure complete transparency. It is better that you, the client, controls the cost of filing the Trade Mark application and make sure the cost stays within your budget.

When you purchase a Trade Mark application package, we provide you with everything included in the package details, including a filing strategy and specification of goods and services tailored and suited to your business. This first payment covers our professional fees, not the official government fees, which are due once the application is officially submitted.

Our filing strategy will indicate the number of Classes of goods and services we believe will provide you with sufficient protection for your Trade Mark, based on our analysis of your business. The number of Classes you choose to cover in the Trade Mark application affects the amount of government fees payable when the Trade Mark application is officially submitted, so once you are happy with the number of Classes and the cost of the government fees, you can then make the second payment to us.

This also means you can reduce the number of Classes, if you think it is not worth covering a particular Class we recommend, and this of course saves you money.

What are trademark classes?

For administrative purposes, and to assist with searching, different goods and services are grouped into 45 classes. The class(es) required by your application will depend on the goods and/or services on which the trademark is to be used. We will advise you as to the appropriate classes required.

Class 1

Chemicals used in industry, science, photography, agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry; carbon; catalysts; cellulose; compost; coolants; fertilisers.

Class 2

Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists; anti-rust oils; dyes; ink for leather; lacquers; printing ink.

Class 3

Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices; after-shave lotions; antiperspirants; bath salts; beard dyes; beauty masks; bleaching salts; boot polish; breath freshening sprays; cake flavourings; cosmetics; eau de cologne; essential oils; false eyelashes, hair and nails; floor wax; hair colorants; hair spray; perfumes; soap; toiletries.

Class 4

Industrial oils and greases; Lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting; beeswax; benzene; coal; combustible oil; diesel oil; gas oil.

Class 5

Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietary supplements for humans and animals; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides; medicated skin care and body care substances; sponges; antiseptic and medicated wipes; drugs for medical purposes; naturopathic and homeopathic preparations and substances; vitamins; fortified beverages and juices; medicinal teas; health supplements; substances and preparations for promoting weight loss; mineral drinks; food for babies; pain killers; tapes, bands, plasters and cotton preparations for medical use.

Class 6

Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores; aluminium foil; anchors; armour plating; bells; bolts of metal; bronze; nails; padlocks; rivets of metal; safes; tin cans; vats of metal; wire cloth.

Class 7

Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs; automatic vending machines; axles; ball-bearings; beer pumps; belts for motors and engines; bending machines; blowing engines; bulldozers; carburettors; centrifugal machines; coffee grinders; drills; dynamos; escalators; engines; hoists; jet engines; knitting machines; looms; mangles; millstones; motors; moulds; ploughs; printing machines; pulleys; robots; transmission shafts; valves; vending machines; waste disposers; wind turbines.

Class 8

Hand tools and implements (hand-operated); cutlery; side arms; razors; axes; beard clippers; chisels; cutters; drills; files; grindstones; guns; hand pumps; jig-saws; manicure sets; screwdrivers.

Class 9

Scientific, nautical, photographic, cinematographic, optical, weighing, life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; recording discs; digital recording media; mechanisms for coin-operated apparatus; cash registers; data processing equipment; computers; computer software; aerials; alarms; amplifiers; audio-visual teaching apparatus; automated teller machines; bar code readers; batteries; cables; cameras; central processing units; clocks; computer peripherals; data processing apparatus; DNA chips; eyeglasses; fuses; headphones; integrated circuits; juke boxes; lights; magnets; modems; neon signs; radios; sunglasses.

Class 10

Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopedic articles; suture materials; acupuncture needles; aerosol dispensers for medical purposes; ambulance stretchers; anaesthetic masks; artificial body parts, namely, breasts, eyes, jaws, limbs and teeth; babies’ bottles; bed pans; breast pumps; catheters; crutches; defibrillators; dentures; hair prosthesis; inhalers; massage apparatus; needles for medical purposes; nursing appliances; pulse meters; trusses; x-ray apparatus for medical purposes.

Class 11

Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes; air conditioning apparatus; air sterilisers; alcohol burners; automobile lights; barbeques; bath installations; ceiling lights; coffee machines; cookers; cooking apparatus; installations and utensils; disinfectant apparatus; sterilizers; tobacco roasters; ventilation hoods; water-pipes for sanitary apparatus.

Class 12

Vehicles; apparatus for locomotion by land, air or water; air balloons; air vehicles; automobiles; baby carriages; bicycles; boats; cars; chairlifts; engines for land vehicles; golf carts; lorries; mopeds; motor homes; motorcycles; ski lifts; sleighs; tilt trucks; tractors; tricycles; turbines for land vehicles; vans; wheelchairs; yachts.

Class 13

Firearms; ammunition and projectiles; explosives; fireworks; automatic firearm ammunition belts; ballistic weapons; cannons; detonators; fog signals; gunpowder; hand grenades; mines; missiles; shoulder straps for weapons; tear-gas weapons.

Class 14

Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments; alarm clocks; beads for making jewellery; busts of precious metals; coins; diamonds; gold, unwrought or beaten; medals; pearls; platinum; silver; tie clips; watches.

Class 15

Musical instruments; accordions; bagpipes; castanets; clarinets; drums; guitars; harps; mandolins; oboes; pianos; saxophones; trombones; violas; xylophones; zithers.

Class 16

Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks; albums; atlases; blackboards; bookends; books; calendars; cards; clipboards; ink; lithographs; stationary.

Class 17

Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, tubes and hoses not of metal; non-metallic pipe and tube connections, couplings, extensions and fittings; drip watering emitters.

Class 18

Leather and imitations of leather and goods made of these materials; animal skins, furs; luggage, travelling bags and suitcases; umbrellas, parasols, canes and walking sticks; harness and saddlery; bags, leashes, muzzles, all for animals; animal covers.

Class 19

Building materials and constructions; frameworks and structures; non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal; floors and flooring; ceilings; cladding; doors and gates; fences; shelves and shelving, including mobile storage racking; all the foregoing goods being predominantly non-metallic.

Class 20

Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21

Household, kitchen, and bathroom utensils and containers; drinking vessels; containers and dispensers for beverages, cosmetics, cleaning materials, toilet and cosmetic utensils; sponges; tableware, bins, bowls; boxes; jars; pots, pans, mugs, dishes; non-electric and electric toothbrushes; dental floss; tissues and wet wipes and moist wipes for cleansing purposes; scratching posts for cats; dog kennels.

Class 22

Ropes; string; nets and network; tents; awnings; tarpaulins; sails; sacks, bags, envelopes and pouches of textile material for packaging; air beds; hammocks; raw fibrous textiles.

Class 24

Textile materials and textile goods, non-woven textile fabrics; cloth; fabrics for textile use; cotton fabrics; filtering materials; plastics substitute materials for fabrics; cloth; buckram, calico, cheese cloth, gauze, badges of textile fabric, labels, flags, pennants, bunting, banners, duvets, duvet covers; household linen; bedspreads, sleeping bags.

Class 25

Articles of clothing, including waterproof and water-resistant clothing; footwear, headgear; babies’ wear, men’s wear, ladies’ wear; rainwear, snow suits, swimwear, wristbands, headbands; costumes, including masquerade costumes; ear muffs, gloves, mittens; socks, stockings and hosiery;  protective and safety footwear, headgear and gloves.

Class 26

Lace and embroidery, ribbons and braids; bands; tinsels; belt clasps; boxes; brooches; buckles; fancy goods; buttons, hooks and eyes, pins and needles; artificial flowers and plants; tie pins; badges; ornaments; decorative patches; hair, false hair, hair extensions, hair tresses, toupees, curlers and curling pins, colouring caps, all for the hair; implements and appliances for hair waving and styling.

Class 27

Floor coverings; carpets; rugs; mats; linoleum and vinyl floor coverings; wallpaper; wall hangings; artificial turf, including artificial grass and bowling greens.

Class 28

Toys, games and playthings; dolls; furniture, clothes, houses, feeding bottles and accessories; rocking horses; scooters; radio-controlled toys; board games; playing articles for swimming pools; self-contained electronic games and instruments; computer games; gymnastic, exercise and sporting articles; surfboards and surf skis; hang gliders; ice skates, roller skates; skateboards; golf bags; balls.

Class 29

Meat, fish, poultry, game; meat extracts; raw and cooked fish and fish products for food; sushi; dried, boiled, frozen and cooked fruits and vegetables; vegetable and fruit spreads and pastes; fruit jellies; mixtures of vegetables and herbs; jellies, jams, fruit sauces; milk and milk products; nuts; cakes, snacks, chips; savoury food products; food supplements and food additives for use as slimming aids or for bodily fat reduction.

Class 30

Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; sugar, honey, treacle; spices; ice; honey; sauces and gravies; spice mixes; cooking sauces and cooking pastes; pizzas;  ice beverages; syrups; cooked meals in this class, including frozen cooked meals and prepared meals; preserved, dried, cooked, processed and frozen preparations, all for making meals.

Class 31

Grains and agricultural, horticultural and forestry products not included in other classes; live animals; fresh fruits and vegetables; seeds; natural plants and flowers; foodstuffs for animals; malt; horticulture and forestry products; food supplements for animals; food supplements made from algae; grains; fresh fruits and vegetables; seeds, almonds, nuts, malt, kernels, legumes, drupes, pods, peanuts.

Class 32

Non-alcoholic beverages; low alcoholic beverages containing not more than 1.2% by volume of alcohol; beers; ales; porter; lager; carbonated beverages; soft drinks; water; sport drinks; cider; fruit and vegetable drinks and fruit and vegetable juices; non-alcoholic and low-alcoholic aperitifs and cocktails; preparations for making any of the aforesaid goods.

Class 33

Alcoholic beverages; alcoholic essences; alcoholic extracts; anise; anisette; liqueurs; wines, including tonic wines;  rum; mead; perry; spirits; vodka; absinthe; tequila; gin; brandy; curacao; kirsch; sake; whisky; cocktails; aperitifs; fruit drinks containing alcohol; alcopops; cider; bitters; distilled beverages; alcoholic fruit extracts; tea and coffee beverages containing alcohol; preparations for making the aforesaid goods.

Class 34 

Tobacco; tobacco products; tobacco substitutes; smokers’ articles; lighters; matches; pipe tobacco, tobacco pipes, snuff; cigarette papers.

Class 35

Advertising, including search engine optimisation; on-line advertising; marketing services; digital marketing strategy; direct market advertising; copywriting services for marketing and advertising; sales promotion services; providing statistical information; organisation of exhibitions; storage, archiving, management and analysis services; data security and  verification services; office services; employment and recruitment services; personnel management; market research and study services; advisory and consulting services relating to any of the aforementioned services.

Class 36

Financial affairs; monetary affairs; administration of financial affairs; trustee services; cash management services; loan services; credit services; credit card services; currency services; credit strategy services; information services relating to finance and credit provided online financial advice, analysis and management; share, stock and bond dealings; charitable fund raising; real estate management and appraisal services; information, enquiry, advisory and consultancy services relating to any of the aforementioned services.

Class 37

Building construction; installation, renovation, repair and maintenance services;s maintenance and repair of motor vehicles and parts and fittings thereof; plumbing services; mending, repairing, refurbishing, stain removing, renovating and alteration services for articles of clothing; fitting, repair and maintenance of kitchens, bedrooms, living rooms, bathrooms, toilets, windows, doors, conservatories, electric appliances and equipment, repair and maintenance of scientific apparatus and instruments and of computer installations, computer software.

Class 39

Transport; packaging and storage of goods; travel arrangement; aircraft rental; arranging of tours; delivery of goods; freighting; hauling; marine transport; piloting; railway transport; salvage of ships; storage; taxi transport; vehicle rental; warehousing.

Class 40

Treatment of materials; abrasion; air freshening and purification; bookbinding; cloth dyeing; destruction of waste; embroidery; fabric bleaching, fireproofing and waterproofing; flour milling; food and drink preservation; gold-plating; key cutting; laminating; leather working; metal casting; paper finishing and treatment; recycling; slaughtering of animals; taxidermy; woodworking.

Class 41

Education; providing of training; entertainment; sporting and cultural activities; academies; amusement parks; arranging and conducting of colloquiums, concerts, conferences, congresses, seminars, symposiums and workshops; boarding schools; camp services; circuses; disc jockey services discothèque services; dubbing; education information; education examination;  gambling; holiday camp services; instruction services; lotteries; night clubs; orchestra services; organisation of balls, competitions, exhibitions and shows; party planning; physical education; radio entertainment; television entertainment; toy rental; videotaping.

Class 42

Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; architectural consultation; architecture; biological research; chemical analysis and research; cloud computing; computer programming; computer software design; cosmetic research; engineering; geological research; industrial design; maintenance of computer software; oil-field exploitation and surveys; providing search engines for the internet; rental of web servers; surveying; weather forecasting.

Class 43

Services for providing food and drink; temporary accommodation; bar services; cafes; canteens; hotels; motels; rental of tents; restaurants; retirement homes; tourist homes.

Class 44

Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services; animal breeding; beauty salons; dentistry; flower arranging; gardening; hairdressing; health care; health spa services; hospices; massage; medical assistance; opticians’ services; pharmacists’ services to make up prescriptions; plastic surgery; psychologists; tattooing; tree surgery; veterinary assistance.

Class 45

Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; adoption agency service; arbitration services; baby sitting; chaperoning; clothing rental; dating services; fire-fighting; funerals; guards; horoscope casting; intellectual property consultancy; legal research; mediation; registration of domain names.

What is a “W.I.S.S.” / Worldwide Identical Screening Search?

This search is highly recommended before a decision is made to file a worldwide Trade Mark, in order to identify the number of identical earlier Trade Marks applied for, or protected, worldwide which may cause an obvious and high risk obstacle to the use and successful registration of your Trade Mark worldwide.

Unlike the Configurable Identical Screening Search (C.I.S.S.), this search will provide you with statistical data regarding the number of identical Trade Marks that have been filed by third parties worldwide and not just in your selected jurisdiction(s). Therefore, if you require a complete overview of identical marks registered worldwide, this search is more suitable for you.

This search will provide you with statistical data regarding the number of identical Trade Marks that have been filed by third parties globally. In the event that your Trade Mark is a compound mark, that is to say, a mark containing two or more different words, this search will provide you with statistical data for each of the words registered as Trade Marks worldwide.

This search will be tailored to the classes that are of particular relevance to your business and to the brand you wish to protect as a Trade Mark.

What is an “EU R.I.S.S.” / EU Regional Identical Screening Search?

This search is highly recommended before a decision is made to file a Community Trade Mark (CTM), in order to identify the number of identical earlier Trade Marks recorded at the various national registries of the EU member states which may cause an obvious and high risk obstacle to the use and successful registration of your Trade Mark in the EU.

This search will provide you with statistical data regarding the number of identical Trade Marks that have been filed by third parties in each of the 28 member states. In the event that your Trade Mark is a compound mark, that is to say, a mark containing two or more different words, this search will provide you with statistical data for each of the words registered as Trade Marks in any of the 28 member states.

This search will be tailored to the classes that are of particular relevance to your business and to the brand you wish to protect as a Trade Mark.

What kind of analysis is involved in the searching process and what factors are considered?

Once we receive the full availability search data from the specialist search provider, we then assess each earlier trade mark which may pose a risk using the following sequential analysis –

Stage 1 – Assessment of the earlier right

  1. Are the marks identical or similar?
  2. Are the goods and services identical or similar?
  3. Is there a likelihood of confusion in the marketplace?
  4. Will the owner of the earlier right be notified of your application by the UKIPO?

Stage 2 – Consequences of proceeding with your mark

  1. Can the earlier trade mark technically block your trade mark application and if so, in respect of which goods and services?
  2. Can the earlier trade mark technically cause an infringement risk to the use of your mark and if so, in respect of which goods and services?

Stage 3 – Mechanisms for overcoming problems

  1. Are there any defences available to you?
  2. Can you attack the earlier trade mark to ensure you are free to use and register your own mark in respect of your core goods and services, on the basis of the various options available under UK and EU law?
  3. What are your alternative commercial options readily available to help you ensure that you are free to use and register the trade mark and what can you do to leverage and improve the situation?

We always draw a clear conclusion to the entire searching exercise as a whole, so you know exactly where you stand – we do not sit on the fence.

From the report, you will be in a position to assess the level of risk in proceeding with an application in connection with potential third party objections. You can decide whether to assume or reject that level of risk.

Who conducts the Full Clearance Search and what is the process?

Trade Mark clearance searching is a complex process involving the assessment of technical data.

The accuracy of this report is very important for the client because it forms the basis of the decision whether or not to apply for a Trade Mark and launch a brand. The accuracy of the report is equally important for our firm because may form the basis of a guarantee to register a Trade Mark.

In light of these two factors, we ensure that the most watertight and comprehensive process and strategy is employed in order to achieve the right results.

Step 1

We instruct and outsource the data collection to leading search providers where the preliminary selection of earlier rights is undertaken by expertly trained Trade Mark search specialists and performed in conjunction with intelligent search system software.

This ensures that we are provided with reliable and complete information and that we are aware of every perceivable earlier Trade Mark which may be visually and phonetically identical or similar to the mark which is the subject of the search, in relation to identical or similar goods and services.

The databases we consulted are updated daily with newly published Trade Marks. This gives you the greatest possible guarantee of an accurate result. Once the initial report is clear and complete we are then provided with all discharge information to conduct a thorough legal analysis of the data.

Step 2

Our Trade Mark practitioners review and analyse all the data to assess which earlier marks may pose a risk or cause an obstacle to the successful registration of your mark. We also provide you with a comprehensive, concise and easy to understand report on whether your mark is registrable, and how to move forward.