Trade Mark Most Asked Questions

The cost of trade mark registration varies widely,with us this typically ranges from £499 plus VAT to several thousand pounds. The final cost depends on:

1. Countries: Each country has its own pricing schedule. Registering in multiple countries will increase the total cost. Using the World Intellectual Property Office (WIPO) to file a single application for multiple countries can be more economical for registrations in five or more countries.
2. Classes of Goods and Services: The scope of protection is defined by the classes of goods and services listed in the application. There are 45 predefined classes, and the average registration includes 2-3 classes. Fees increase with each additional class, and this in itself ranges depending on the jurisdiction.
3. Third-Party Service Fees: If you hire a specialist, law firm, or online legal service, additional fees will apply, but the statutory fees alone are likely to be a few hundred pounds even if you are filing the application yourself.
4. Grants: Some jurisdictions offer grants, such as the EUIPO’s SME Fund, which can provide financial relief, often in the form of a rebate.

There is no such thing as a global trade mark. Registering a trade mark in every country would cost thousands of pounds even if you intend to do this yourself. However, most businesses only need to register in countries where they operate or plan to expand.

In some countries, you can file a trade mark yourself if you have a business address for correspondence. However, using a professional can be beneficial. Self-filed applications have a 37% failure rate and are 3x more likely to be rejected. Common mistakes include submitting non-distinctive marks, incorrect listings of goods and services, and not responding to office actions. A professional can help avoid these issues, giving you advice from the outset and negotiating if a similar trade mark opposes your application.

You have three options:

1. File the application yourself
2. Use a IP specialist that is an agent of the IPO
3. Use an online legal service

No, trade mark registration requires payment for official processing by an Intellectual Property Office. Some offices offer reimbursements or grants, which can reduce costs.

If you’re on a tight budget, consider these options:

1. Filing Method: Choose how you intend to make and file your application, each with different costs and success rates.
2. Country Selection: Start by registering in one country where you have the largest customer base and expand to other countries later.
3. Class Selection: Limit the number of classes to essential ones. While it’s advisable to cover all your offerings, focusing on core classes can reduce costs.

Yes, each additional class incurs an extra fee. Classes define the areas of legal protection for your trade mark. More classes mean broader protection but also higher costs and potential opposition. In some jurisdictions, each additional class costs less than the initial one. However, a few places require a separate application for each class.

Unfortunately, yes, you would lose the fee if your trade mark application is dismissed. However, you can minimise this risk by taking the proper precautions and seeking professional advice from the beginning.

Professional legal guidance can help you in three key ways:

1. Assess Registrability: A legal representative can evaluate the registrability of your mark, warning you if there’s a high chance of dismissal and suggesting adjustments to improve your chances. We offer this type of assessment free of charge.
2. Application Preparation: They can ensure your application meets all the necessary requirements.
3. Representation: If the IP office raises any issues, a professional can represent you and respond accordingly.

Additional costs may arise if the IP office issues an office action or if a third party opposes your trade mark application. The exact cost will depend on the complexity of the issue and the fees quoted by your legal representative. Your representative should inform you of the costs and estimated chances of success before proceeding.

It’s not mandatory to respond to these actions, but choosing not to means losing all previously paid fees.

Generally, there are no annual or maintenance fees during the validity of a registered trade mark, just the renewal fee each 10 years, except in the United States.

In the U.S., there are two filing bases:

1. Use in Commerce Basis: Requires a Declaration of Use in Year 5.
2. Intent to Use Basis: Requires a Statement of Use within Year 1 to show the trade mark is in commercial use.

Both declarations are subject to additional fees. 

You might also encounter fees if you subscribe to a trade mark monitoring service, which alerts you to similar trade mark applications. This service is typically offered by private companies on an annual fee basis, and means that you are not required to regularly monitor your competitors or the trade mark register to see if anything being applied for is too similar to your trade mark registered.

Trade mark registration fees are typically due at the time of filing the application or shortly thereafter. The fee structure and payment deadlines can vary by jurisdiction. Some jurisdictions require full payment upfront, while others have a staged fee structure, with additional fees due during examination or publication stages.  The right start option in the uk is an example of this.

If you have limited funds, consider filing a trade mark application in one of your key countries, such as where you are based or have the largest customer base. Filing early in these locations can prevent copycat attempts and establish priority.

Once you secure investment, you can expand your protection to more countries. You can file through an IPO agent, or use the Madrid System via WIPO, which allows for trade mark registration in multiple countries with one application.

You can also leverage the priority right. If you file applications in other countries within six months of your initial application, you can claim the original filing date for the new applications. This means the protection will start from the earlier date, allowing you to wait for your investment before extending your protection without losing any rights.

There’s no uniform price for one trade mark  in the EU (and most jurisdictions, for that matter). The cost depends on how many classes you want to register your trade mark in.  If we file a trade mark for you within the EU costs start from £1750 including the statutory fees.

Before applying to register a trade mark we would strongly recommend paying us to undertake a search report to establish if there is likely to be any issues or opposition to your application.  For an EU search we charge £150 plus VAT.

Our costs start from £499 plus VAT for a trade mark in the UK.  Additional classes would be £120 plus VAT per class.  We do however, strongly recommend having a monitoring service once you register your mark, for us to do that the total fee for the application and first year monitoring would be £649 plus VAT.

It is worth noting that the UKIPO also offers a Right Start application, which means you pay half the fee upfront and receive an examination report prepared directly by the UKIPO. Then, if your mark meets the criteria for registration and you’re allowed to proceed in the process, you pay the second half of the fee.

Before applying to register a trade mark we would strongly recommend paying us to undertake a search report to establish if there is likely to be any issues or opposition to your application.  For a UK search we charge £99 plus VAT.

For us to register a trade mark in the US, the costs start from £1750 plus VAT, but as with all countries/jurisdictions you wish to register, each class has an additional fee.  Before applying to register a trade mark we would strongly recommend paying us to undertake a search report to establish if there is likely to be any issues or opposition to your application.  For a US search we charge £150 plus VAT.