Yes, under certain circumstances. But it can be difficult and expensive to rely on unregistered rights and for this reason it’s preferable to register a trade mark as your own exclusive property.
Trade marks can be registered in most countries. Two international systems are available: the EU trade mark and the Madrid Protocol, which is useful for protecting your trade mark in non-EU countries such as the United States and China. If you want to try and protect your trade mark in several different countries then we can work out the best filing strategy to fit your needs.
An EU trade mark application is filed at the European Union Intellectual Property Office (EUIPO).
You can file a trade mark application at the UK Intellectual Property Office (IPO) or EU Intellectual Property Office (EUIPO) at any time: before or after use of the trade mark has started. When you apply, you must specify the goods or services for which the mark will be used. There are 45 classes of goods and services and we can help you decide which ones you need to include in your application. We can prepare the application and file it for you at the IPO or EUIPO.
It could take four to six weeks for the IPO or EUIPO to examine whether the trade mark is inherently registrable and whether the goods and services included in the application are properly classified. An examiner will also search for similar trade marks but will not raise an objection. Instead the IPO or EUIPO will write to the owner of the similar trade mark to tell them about your application. Once the IPO or EUIPO approves your application, it’s published. Within a fixed period (e.g., two months in the UK), anyone can oppose registration of the trade mark, usually on the ground that that person has earlier rights in a trade mark that’s confusingly similar. If that happens then we can provide further advice and guide you through the opposition procedure. If there’s no opposition, a certificate of registration is issued about 4 to 6 months after the original application was filed.
The cost of filing a trade mark application depends on how many classes of goods and services need to be covered.
A UK trade mark application costs £575 for the first class and £75 for each additional class. An EU trade mark application costs £1160 for one class, £1210 for two classes and £150 for each additional class.
On registration, there is an additional cost of £240.
These figures exclude VAT but include the official fees; providing advice about the mark and the goods and services to be applied for, preparing and filing the application at the IPO or EUIPO; informing you about the various formal steps such as publication and registration; and remaining as your representative for the first ten years of the lifetime of the registration meaning that we will e.g., pass on notifications of applications for similar marks, notify you of any significant changes in the law that affect your registration and remind you to renew your registration at the appropriate time.
A trade mark is initially registered for ten years and can be renewed for further periods of ten years by the payment of renewal fees.