Trademark registration in Great Britain – Professional trademark protection for your company

Registering a trademark in the UK can be done not only nationally with the help of our UK colleagues at the United Kingdom Intellectual Property Office (UKIPO), but also through the World Intellectual Property Organization (WIPO). We will discuss with you which of these two options is best for your company in a detailed preliminary consultation.

To register an IR trademark with protection in Great Britain:

A British trademark application is filed through the World Intellectual Property Organization (WIPO) in Geneva. A so-called basic trademark, previously registered as a national trademark, for example, in Germany, is forwarded to WIPO and registered internationally (an IR trademark). The IR trademark is then forwarded to the UKIPO, which verifies compliance with national trademark protection requirements. If the IR trademark is accepted by the UKIPO, trademark protection is extended to Great Britain.
This procedure is possible if both the country of origin of the basic trademark and the United Kingdom are members of the Madrid Agreement (MMA) or the Protocol to the Madrid Agreement (PMMA). This applies to German trademarks, European Union trademarks, and many other countries.
An application for an International Registration (IR) with protection in Great Britain must first be filed with the national trademark office of the country of origin (e.g., the DPMA for German trademarks or the EUIPO for European Union trademarks). After examination, the application is forwarded to WIPO, which re-examines it and then forwards it to the UKIPO, where registration takes place after the final examination.

Let us professionally guide you through the entire registration process for your British trademark. Contact me for comprehensive advice on trademark registration in the UK and protect your brand now!

Before registering a trademark in the UK, it is crucial to check your chosen trademark name for so-called "absolute grounds for refusal." The UK Intellectual Property Office (UKIPO) will only register your trademark if no such grounds exist.
An absolute ground for refusal could arise, for example, if the trademark lacks the necessary distinctive character or cannot be registered due to its purely descriptive nature. Likewise, a risk of deception or a need to keep the trademark available may prevent trademark protection.

Why a collision search is essential:
A thorough trademark search is essential before registering to minimize the risk of conflict with existing trademarks. If your trademark is registered despite a potential conflict with an older trademark, the owner of the older trademark may file an opposition, file a cancellation action, or issue a cease-and-desist letter to your company.
Cost savings through collision research
The costs of a legal dispute, opposition proceedings, or cancellation action are usually considerably higher than the costs of a professional conflict search. Through early and comprehensive research, potential conflicts can be identified and avoided early on.

Avoid costly trademark disputes in the UK by getting professional support with your trademark conflict search. Contact me now for a thorough and cost-effective trademark search that will protect you before registering your trademark in the UK!

Filing a British trademark as an International Registration (IR) involves various fees, which vary depending on the number of Nice classes and the relevant trademark office. Here is an overview of the most important fees:

Trademark registration fees:

• Forwarding fees of the trademark offices (DE + EU):

  • DPMA fees: 180.00 EUR for forwarding after registration of the basic trademark, excluding the registration costs for the basic trademark.

  • EUIPO fees: EUR 300.00 for forwarding after registration of the basic trademark, excluding the costs for registration of the basic trademark.

• WIPO fees:

  • CHF 653.00 for a word mark or a black and white figurative mark.

  • CHF 903.00 for a coloured figurative mark or word/figurative mark (basic fee of the World Intellectual Property Organisation).

• UKIPO fees:

  • CHF 202.00 for the first Nice Class and CHF 56.00 for each additional class from the second Nice Class onwards (UK Trademark Office fees).

What are Nice classes?
When registering your trademark in the UK, you must specify the goods or services for which your trademark is to be protected. These can be classified into one of the 45 Nice classes. The amount of fees at WIPO and UKIPO depends on how many of these classes you select for your trademark.

Renewal of the trademark after 10 years:
After 10 years, you must renew your trademark protection. The following fees apply:

• WIPO: In addition to the basic fee of CHF 653, there is a fee of CHF 224.00 for the first Nice class and CHF 56.00 for each additional class from the second onwards.

• UKIPO (direct): If the mark is renewed nationally at the UKIPO, the fees are GBP 200.00 for the first Nice Class and GBP 50.00 for each additional class from the second onwards.

As a trademark attorney, I provide comprehensive advice on registration fees and renewal options, and support you in structuring your trademark protection in the UK efficiently and with legal certainty. Contact me for detailed advice on trademark registration in the UK!

In the UK, a five-year grace period applies after trademark registration. This means that a trademark must be actually used no later than five years after registration to retain legal trademark protection.

What happens if the trademark is not used?
If the registered trademark is not used within five years, a third party may file a cancellation request. In this case, the trademark will be canceled unless the owner can prove actual use.

Why is the grace period relevant?
The grace period ensures that trademark protection is only granted for trademarks that are actually actively used in commerce. It prevents trademarks from being registered solely for strategic reasons to make it more difficult for others to use similar trademarks. To ensure long-term trademark protection, it is crucial to actively use the trademark.

As a trademark attorney, I will assist you with your trademark registration in the UK and ensure that your trademark is registered with the UKIPO in a legally sound and efficient manner. I will guide you through the entire process – from trademark research and registration to ongoing monitoring of trademark protection. Trust in my expertise to ensure the best possible protection for your trademark in the UK.

Contact me now for comprehensive advice on trademark registration in Great Britain!