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Procedure for filing and prosecuting a UK Trade Mark Application:

Prior to filing a new Trade Mark Application or commencing use of a Trade Mark in the UK, Albright Patents strongly recommend that Trade Mark searches are conducted for potentially conflicting Trade Marks.

 

Filing/Priority

 

Albright Patents will prepare and file an Application at the United Kingdom Intellectual Property Office (UKIPO). We advise regarding the most appropriate Classes of goods/services and draft a specification. Priority can be claimed within 6 months of the earliest corresponding Application.

 

Filing Receipt


After the Application has been filed, an official filing receipt will be issued approximately 1-2 weeks later. Albright Patents will check that the Application details have been captured accurately by the UKIPO and report the same to you.

 

Examination


An examination report will be issued approximately 4-6 weeks after payment of the official filing fees. The UKIPO conducts a two stage examination: - 

 

  • Relative grounds, i.e. a search for conflict with earlier Trade Mark Applications/Registrations in the UK; and
  •  Absolute grounds (i.e. an assessment of whether the Trade Mark applied for is descriptive, non-distinctive or customary in the relevant trade).

The UKIPO has changed its relative grounds examination and no longer refuses later Applications based upon earlier Trade Mark Applications/Registrations located in its search. Instead, whilst continuing to conduct this search, the UKIPO notifies proprietors of earlier UK and International (UK) Trade Marks located of the later Application, in order that these Proprietors can file opposition, if they are concerned. The UKIPO will not notify CTM Proprietors unless they have “opted-in” to the notification procedure and paid the fee for this. 

 

Publication


If no examination objection is raised or any objection overcome, the Application will be published in the Trade Marks Journal for a period of two months. During this time, third parties can file opposition on the basis of, inter alia, prior registered or unregistered rights. In addition to checking that the publication details are correct, Albright Patents will monitor whether any opposition is filed. In the event that opposition is received, we will advise on available courses of action, strategy and associated costs.

 

Registration


If no opposition is raised or any opposition fails, registration will be granted. In a straightforward Application, the registration procedure takes around 8-10 months. Albright Patents will monitor receipt of your Registration Certificate, check and forward the same to you.

 

Renewal

 

A UK Trade Mark Registration remains in force indefinitely, subject to the Trade Mark being used in relation to the goods/services for which it is registered and the timely payment of renewal fees at ten yearly intervals. Albright Patents will diary the renewal deadline in order that we can try and contact you in advance for instructions about renewal and/or any change of proprietor details.

 
 

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UK Trade Mark Application Costs:

Searching

 

Albright Patents offer two principal types of UK/CTM/Madrid Protocol (UK/CTM) Trade Mark Register searches: -

 

  • IDENTICAL Trade Mark Search in up to three Classes (free). If the search is required to cover more than three Classes, we will provide a cost estimate in advance.  
  • FULL CLEARANCE designed to locate both identical and similar Trade Mark Applications/Registrations with effect in the UK (£500 plus VAT). If the search is required to cover more than three Classes, we will provide a cost estimate in advance.

In addition to searches of the Trade Mark Registers, we urge Clients to undertake their own investigation into use of similar Trade Marks in an "unregistered" capacity, for example, on the Internet, Yellow Pages and at Companies House. Alternatively, we can conduct common law, company name and domain name searches as required.

Cost of Searching, Filing and Prosecuting a UK Trade Mark Application:

Filing Fees

 

£475 plus VAT for the first Class of goods/services (inclusive of £200 official fee)

£125 plus VAT for each Class of goods/services after the first (inclusive of £50 official fee)

 

Prosecution Fees (Examination/Publication/Registration)

 

In a straightforward case, encountering no Examination objections or opposition, additional prosecution costs should not exceed £260 plus VAT for the first Class and an additional £40 plus VAT for each Class after the first. If Examination objection and/or opposition are raised, these estimates will increase. We are happy to provide an estimate of costs at the time.

The above costs include both Albright Patents' fees and the UKIPO’s official fees (at today's rates).

 
 

Required Information and Documentation:

In order to file a UK Trade Mark Application, we require the following: -

  • A representation of the Trade Mark. If this is a Logo, please let us have an email copy in pdf or jpeg format;
  • A list of goods/services or information about the Applicant's intended or actual goods/services of interest;
  • Applicant name and address, including nationality and state of incorporation; and
  • If applicable, priority details, namely, country, date and Application number of first filing. A certified copy of the priority Application will be required post-filing.

Please note that we do not require a Power of Attorney.