Trade mark registration—strategy
Trade mark registration—strategy

The following IP guidance note provides comprehensive and up to date legal information covering:

  • Trade mark registration—strategy
  • What is a trade mark?
  • Choosing a trade mark
  • Territorial scope
  • Drafting the specification
  • Cost-benefit analysis
  • Registration process

As of exit day (31 January 2020) the UK is no longer an EU Member State. However, in accordance with the Withdrawal Agreement, the UK has entered an implementation period, during which it continues to be subject to EU law. This has an impact on this Practice Note. For further guidance, see Practice Note: Brexit—IP rights.

This Practice Note deals with the strategic and practical issues to be considered when registering a trade mark. It includes guidance on choosing a trade mark, assessing the appropriate territorial scope, drafting the specification, conducting clearance searches and carrying out a cost-benefit analysis. It also sets out a summary of the practical process.

For detailed guidance on managing a trade mark portfolio, see Practice Note: Managing a trade mark portfolio and its accompanying Precedents: Trade mark search sheet and Trade mark filing sheet.

What is a trade mark?

A trade mark’s essential function is to be a badge of origin. It distinguishes the goods and services of one undertaking from those of other undertakings. In order to fulfil this function, a trade mark needs to be distinctive.

Typically, trade marks take the form of words or logos though it is possible to protect more unusual forms of trade marks such as colours, slogans, shapes of products or packaging, sounds, motions and even smells.

Registration of a trade mark