47 plain-English answers to the questions clients actually ask. Written by a UK solicitor. Every claim cites the relevant section of the Trade Marks Act 1994 or current UKIPO practice.
Foundation concepts. Read this section if you are new to trademark law.
A trademark is a sign that distinguishes the goods or services of one business from another. In the UK it is governed by the Trade Marks Act 1994. It can be a word, logo, slogan, shape, sound, or colour. Once registered with the UKIPO, the owner has the exclusive right to use the mark for the goods and services it covers.
Registration is not legally required, but unregistered marks are protected only by the common law tort of passing off, which is expensive and difficult to prove. A registered trademark is presumed valid, easier to enforce, and is a registered asset of the business that can be licensed, assigned, or used as security.
A UK trademark is registered for 10 years from the filing date and can be renewed indefinitely for further 10 year periods. The renewal fee is £245 for the first class and £60 for each additional class (from 1 April 2026). The UKIPO allows a 6 month grace period after expiry to renew with a late fee.
TM is used to indicate that a sign is being used as a trademark, regardless of whether it is registered. It signals brand ownership but has no formal legal effect. R (with circle) means the trademark is registered. Using R for an unregistered mark is an offence under section 95 of the Trade Marks Act 1994. Use TM until registration is granted, then switch to R.
No. A company name is registered with Companies House and only prevents another company being incorporated with an identical or very similar name. It does not give you trademark rights or the right to stop others using the name as a brand. A trademark registration gives exclusive rights to use the name in commerce for the goods and services it covers. Most successful businesses register both.
Costs, timelines, and registrability questions.
From 1 April 2026, the UKIPO official fee is £205 for the first class and £60 for each additional class filed in the same application. On top of that, professional fees vary by provider. Western Legal Tier 1 (review and file) is £350. Tier 2 (Standard, includes search and objection replies) is £550. Tier 3 (Premium with watching service) is £850.
A smooth UK trademark application takes 4 to 6 months from filing to registration certificate. The timetable is: examination by UKIPO (usually 2 weeks); publication for opposition (2 month opposition window); registration certificate issued after the opposition window closes if no opposition is filed.
Yes. Logos are registrable as figurative marks. You file the logo image (a 'graphical representation' that is clear, precise, and durable) along with the goods and services it covers. If your logo includes a word, you should also consider a separate word-only application for broader protection, because a word mark covers the word in any font.
Yes, but slogans face a higher distinctiveness bar than brand names. Slogans that are purely descriptive or promotional (such as "We do it best") are typically refused under section 3 of the Trade Marks Act 1994. Slogans that are arbitrary, distinctive, or have acquired distinctiveness through use can be registered.
Yes, but colours are very difficult to register as trademarks because they are presumed to lack distinctiveness. To succeed you generally need to prove acquired distinctiveness through extensive use. Famous examples are Cadbury's purple (Pantone 2685C) and Tiffany's blue (Pantone 1837). For most businesses, colour marks are not a realistic option without years of distinctive use.
Yes, but the UKIPO usually examines common surnames carefully under section 3(1)(b) (lacking distinctiveness). Distinctive or rare surnames register more easily than common ones. Stylised personal-name marks (with a logo or distinctive typeface) register more easily than plain text. Use of a person's own name in good faith is also a defence to infringement under section 11.
Bad faith under section 3(6) of the Trade Marks Act 1994 is a ground for refusing or invalidating a trademark. It covers filings made with no intention to use the mark, filings designed to take advantage of someone else's reputation, and filings that breach a confidential or fiduciary relationship. The Supreme Court in Sky v SkyKick [2024] UKSC 36 clarified that lack of intention to use can amount to bad faith.
The UKIPO online register at gov.uk allows free searches by mark, owner, or number. The EUIPO eSearch Plus and the WIPO Global Brand Database extend the search to EU and international marks. A basic keyword search misses similar marks, phonetic equivalents, and conceptual conflicts. A solicitor-led conflict search reviews the register strategically for marks that could block your application or expose you to opposition.
What happens between filing and getting your certificate.
The UKIPO issues an examination report setting out the grounds for refusal. You have 2 months to respond. Common grounds are: relative grounds (conflict with an earlier mark, s.5), absolute grounds (descriptiveness, lack of distinctiveness, bad faith, s.3), or technical issues with the specification. Many objections can be overcome by argument, evidence of acquired distinctiveness, or amendment of the specification.
After the UKIPO examines an application and accepts it, the mark is published in the Trade Marks Journal. From the date of publication, there is a 2 month window during which any third party may file a Notice of Opposition (Form TM7). The opposition window can be extended to 3 months by filing a Form TM7A. If no opposition is filed, the mark proceeds to registration.
The Nice Classification and getting it right.
The Nice Classification is an international system that groups all goods and services into 45 classes. Classes 1 to 34 are goods, classes 35 to 45 are services. You must file your trademark in the class or classes that cover your actual or intended use. Wrong classification is the most common reason for an application to fail to protect what the business actually does.
You file in every Nice class that covers your actual goods or services, or your near-future intended use. Speculative filing in classes you do not use can be vulnerable to revocation for non-use after 5 years. A typical fashion brand files in class 25 (clothing). A software company files in class 9 (software) and class 42 (SaaS). A solicitor-led search identifies the right classes and conflicts before filing.
No. Once filed, you cannot add classes to an existing UK trademark application. You can only narrow the specification. If you need additional classes, you must file a new application, with the disadvantage that any third party use of the mark in those classes since your earlier filing is not infringing. File the right classes from day one.
Free for new clients. We tell you in 24 hours whether your mark is clear, which classes you need, and what to expect at examination.
Email UsFiling or defending opposition before the UKIPO Tribunal. Full opposition defence page →
A Notice of Opposition is the formal document filed at the UKIPO under section 38 of the Trade Marks Act 1994 to oppose the registration of a published trademark. Standard oppositions are filed on Form TM7 with an official fee of £250. Fast-track oppositions limited to s.5(1) and s.5(2) grounds are filed on Form TM7F with an official fee of £125.
You have 2 months from the date the TM7 is served on you by the UKIPO to file a Notice of Defence and Counterstatement (Form TM8). The 2 month deadline is not extendable unilaterally. If you and the opponent both agree, you can file a joint Form TM9C for a cooling-off period that extends the proceedings to 9 months in total to allow for settlement negotiations. If you do nothing, your application is treated as abandoned.
You have 2 months from the date the application is published in the UK Trade Marks Journal. You can extend this to 3 months by filing a Form TM7A (a "notice of threatened opposition") before the initial 2 month deadline. The TM7A has no official fee. After the 3 month deadline, the only route to challenge the registration is invalidation under s.47 (Form TM26(I)).
UKIPO costs in trademark opposition are awarded on a published scale (Tribunal Practice Notice 1/2023) on a "contribution-not-compensation" basis. The loser pays a fixed contribution at each stage, typically a few hundred to a few thousand pounds in total for a fully fought opposition. The Tribunal can award off-scale costs only where a party has behaved unreasonably (delay, procedural abuse, refusal of reasonable settlement).
In trademark opposition or invalidation, if the opponent's earlier mark was registered more than 5 years before the application date of the contested mark, the applicant can require the opponent to prove genuine use of the earlier mark in the 5 years before the relevant date (section 6A Trade Marks Act 1994). Failure to prove genuine use means the earlier mark cannot be relied on. Proof of use is one of the most powerful defensive tools in opposition.
Challenging registered marks. Full Tribunal hub →
Invalidation is a Tribunal action under section 47 of the Trade Marks Act 1994 to remove a registered trademark from the register on the basis that it should never have been registered in the first place. Common grounds include conflict with an earlier mark, lack of distinctiveness, or bad faith filing. If successful, the registration is treated as if it never existed. The official UKIPO fee is £250 (Form TM26(I)).
Revocation removes a registered trademark from the register for events that occurred after registration. The most common ground is non-use for 5 years in the goods or services covered by the registration (section 46 Trade Marks Act 1994, Form TM26(N), official fee £250). Revocation also covers marks that have become generic terms or misleading. Revocation operates from the date the application for revocation is filed, not retroactively.
Invalidation attacks the registration on the basis that it should never have been granted (events before or at the time of registration). It operates retroactively as if the mark were never registered. Revocation removes a mark for events that happened after registration (such as 5 years of non-use). Revocation only operates from the date the revocation application is filed. The two routes can be combined in one action.
Yes, within 28 days of the decision under section 76 of the Trade Marks Act 1994. The appeal lies to one of two forums: the Appointed Person (an independent senior IP barrister whose decision is final, no further appeal) or the High Court (Chancery Division), from which a further appeal lies to the Court of Appeal. The Appointed Person is faster and cheaper. The High Court is slower and more expensive but allows further appeal.
When someone uses your mark, or accuses you of using theirs. Cease and desist service →
Trademark infringement under section 10 of the Trade Marks Act 1994 occurs when a third party uses, in the course of trade, a sign that is identical or similar to a registered trademark for identical or similar goods or services, where this creates a likelihood of confusion. Section 10 also covers identical use on identical goods (no need to prove confusion) and use that takes unfair advantage of a mark with reputation.
Passing off is a common law tort (not a statute) that protects unregistered brand goodwill. To succeed in a passing off claim you must prove three things (the "classical trinity" from Reckitt & Colman v Borden [1990] 1 WLR 491): goodwill in the brand, misrepresentation by the defendant, and damage. Passing off is harder to prove than registered trademark infringement, which is why most businesses register their marks.
A cease and desist letter is a formal demand from a solicitor that a party stop infringing your trademark and provide written undertakings not to do so again. A properly drafted letter cites the legal basis (Trade Marks Act 1994 s.10 for registered marks, passing off for unregistered marks), specifies the infringing conduct, and sets a deadline. Most disputes resolve at this stage without litigation.
The Intellectual Property Enterprise Court (IPEC) is a specialist court within the Business and Property Courts of England and Wales that hears small to medium IP disputes including trademark infringement and passing off. IPEC has capped damages of £500,000 and capped recoverable costs of £60,000 in the multi-track. The IPEC Small Claims Track handles claims up to £10,000 with no costs recovery.
The IPEC court fee for issuing a claim is based on the value claimed (typically £455 to £10,000). Recoverable legal costs are capped at £60,000 in the multi-track and there is no costs recovery in the small claims track (claims up to £10,000). This is significantly cheaper than the High Court, where costs in a contested trademark case routinely exceed £150,000. IPEC is the right forum for most SME trademark disputes.
Do not ignore it and do not respond emotionally. The letter may or may not be well-founded. Get the letter reviewed by a solicitor within the deadline stated. The solicitor will assess whether your use infringes, whether the sender's threats are unjustified (which can give you a counterclaim under section 21 Trade Marks Act 1994), and whether a settlement, undertaking, or pushback is the right response.
Under section 21 of the Trade Marks Act 1994 (as amended by the Intellectual Property (Unjustified Threats) Act 2017), it is actionable to make threats of trademark infringement proceedings that are not justified. The remedy is a declaration, an injunction restraining further threats, and damages. This is why a baseless cease and desist letter can backfire on the sender. Solicitor-drafted letters minimise this risk by ensuring threats are properly grounded.
Under section 10A of the Trade Marks Act 1994, use of a competitor's trademark in honest comparative advertising is not infringement, provided the comparison meets the requirements of the Business Protection from Misleading Marketing Regulations 2008 (objective, fair, not misleading, comparing like with like). Comparative advertising is a powerful and underused defence in disputes between brands in the same market.
Cross-border trademark protection.
An EU trademark (EUTM) is a single trademark registration covering all 27 EU member states, granted by the European Union Intellectual Property Office (EUIPO) in Alicante, Spain. One application protects the mark across the entire EU. Since Brexit, EUTMs no longer cover the UK and a separate UK application is needed. Most businesses with EU and UK customers file both.
The EUIPO official fee is €850 for the first class, €50 for the second class, and €150 for each additional class. Professional fees from Western Legal are tiered: Tier 1 €600, Tier 2 €900, Tier 3 €1,400 (all up to 3 classes, professional fee only). EU applications must be filed through a representative based in the EU, EEA, or Switzerland.
Yes, but since Brexit you must use an EU-based representative for any EUIPO action beyond simple filing. UK solicitors and trademark attorneys are no longer authorised to represent applicants before the EUIPO directly. Western Legal works with an established EU correspondent agent in Hungary who handles the EUIPO-facing work while we remain your point of contact.
Indian trademark applications are filed with the Indian Trade Marks Registry under the Trade Marks Act 1999. The Indian fee is INR 9,000 per class for e-filing (about £85). The process takes 18 to 24 months. Foreign applicants must use a registered Indian Advocate. Western Legal is run by Santosh Pandey, a qualified Indian Advocate, so Indian trademarks are filed directly without correspondent fees: £120 per class all-inclusive.
The Madrid Protocol is an international trademark filing system administered by WIPO (World Intellectual Property Organization) that allows you to extend protection of a "base" trademark (in your home country) to multiple member countries through one international application. There are over 130 Madrid member countries. Madrid is efficient for businesses filing in 3 or more countries because each designated country has its own examination but you file once and pay once.
Keeping your registration alive.
You have a 6 month grace period after the renewal date in which to renew with a late fee (£50 per class). If you still do not renew by the end of the grace period, the trademark is removed from the register. The registration can be restored within 12 months of removal under section 43 of the Trade Marks Act 1994, but restoration is discretionary and not guaranteed. Set renewal reminders.
Yes. Under section 46 of the Trade Marks Act 1994, a registered trademark that has not been put to genuine use in the UK for 5 consecutive years can be revoked for non-use on application by any interested party. Genuine use means real commercial use, not token use designed only to maintain registration. Keep evidence of use (invoices, marketing materials, sales data) in case of challenge.
Yes. A registered trademark is a transferable asset. Sale (assignment) is governed by section 24 of the Trade Marks Act 1994 and should be recorded at the UKIPO to be effective against later third parties. Licensing is governed by section 28. A trademark licence should be written, define the scope of permitted use, and address quality control. Failure to control licensee quality can in extreme cases lead to revocation.
A trademark watching service monitors new trademark applications published in the UKIPO and EUIPO registers and alerts you if a third party files a mark identical or similar to yours. Watching is the only way to catch and oppose problematic third-party filings within the 2 month opposition window, because the UKIPO does not notify you of conflicting filings. Western Legal Tier 3 includes 12 months of watching.
When you can do it yourself, and when you cannot.
Yes, you can. The UKIPO Tribunal accepts filings and submissions from litigants in person. The risk is that trademark pleadings, evidence, and submissions are technical: a winnable case can be lost on a procedural slip, a poorly drafted counterstatement, or a missed proof-of-use point. Litigants in person can also recover costs only at the CPR litigant-in-person rate of £19 per hour under TPN 1/2023.
A trademark attorney (formerly "trademark agent") is regulated by IPReg. They specialise in IP prosecution and are qualified to represent clients at the UKIPO and EUIPO. A solicitor is regulated by the SRA and qualified to handle the full range of legal work including litigation in the courts (High Court, IPEC). A solicitor with trademark experience offers both prosecution before the registry and full court representation. Western Legal is solicitor-led.
Yes for both regulated trademark attorneys and solicitors. Section 280 of the Copyright, Designs and Patents Act 1988 extends legal professional privilege to communications with a registered trademark attorney for the purpose of obtaining or providing advice on trademark matters. Solicitor-client privilege is broader (covers all legal advice). Communications with unregulated trademark filing services are not privileged.