INTRODUCTION
If you have obtained a U.S. trademark registration, you might be interested in expanding your trademark protections to other countries. Registering a trademark in the United Kingdom can provide trademark rights and protections in England, Scotland, Wales, and Northern Ireland. This may be beneficial if you have customers in Glasgow or plan to open a physical store in London. When devising your international trademark plan, it’s important to take into account the costs associated with registering a trademark in the United Kingdom.
OVERVIEW OF THE FILING PROCESS
When you are getting ready to file your trademark in the UK, you have various options available. One of the most popular choices, especially if you plan to register your trademark in several countries, is the Madrid Protocol. Under this treaty, trademark owners can apply for registration in any of its 90 member countries using a single application. While the Madrid Protocol simplifies the application process, it doesn’t guarantee that your registration will be accepted in all the countries where you file. While you will only pay a single application fee with the Madrid Protocol, you must factor in the registration expenses for each country where your trademark is approved.
The Madrid Protocol is a commonly used option for trademark owners seeking to register in multiple countries, as it allows for a single international application. However, the broad nature of the application means that individual trademark offices may request additional information or documents. The European Union also has a similar process for community trademarks, but due to Brexit uncertainty, it is recommended that trademark owners file directly with the IPO to register in the UK.
Another option for registering your trademark in the UK is to file directly with the Intellectual Property Office (IPO), which is the country’s trademark office. This option enables you to complete a trademark application that specifically meets the UK’s requirements and requests. Filing directly with a country’s trademark office often results in a faster registration process and a higher chance of approval, as most of the requirements are outlined in the individual application. If your international trademark plans are limited to the UK for now, it is recommended to file directly with the IPO.
GENERAL COSTS TO REGISTER IN THE U.K.
There are many fees associated with filing and maintaining an international trademark.
COMMON GOVERNMENT FEES FOR TRADEMARK FILING AND MAINTENANCE IN THE U.K.
- Application Fee: – £170 ($225.83) for online applications; £200 ($265.68) for paper applications.
- Additional Classes (When requested by the IPO): – £50 ($66.42)
- International Fee: – £40 ($53.14) plus additional WIPO fees
- Renewal fees: – £200 ($265.68)
- Notice of Opposition: – £100-£200 ($132.84-$265.68) depending on the grounds for opposition
Many actions have no fee attached, including merging or dividing trademark registrations. To review a full list of costs, consult the IPO website.
ATTORNEY’S FEES ASSOCIATED WITH FILING A TRADEMARK IN THE UNITED KINGDOM
To avoid confusion, it’s important to mention that the fees mentioned earlier do not cover the costs of legal fees associated with filing a U.K. trademark application, monitoring its progress, and answering basic examination queries. These legal fees can typically amount to around $1,000.
ADVANTAGES OF WORKING WITH AN ATTORNEY
Some business owners who are concerned about their budget try to avoid the expenses of hiring a trademark attorney by handling international trademark registration on their own. However, this approach may ultimately prove to be more costly in the long run. Although it’s possible to begin the registration process without an attorney, especially if you opt for the Madrid Protocol, it’s often necessary to hire local counsel later on to communicate with the trademark office and finalise the process. If a local attorney has to assist you in reapplying for a trademark due to filing errors, this could end up being more expensive than if you had hired an experienced trademark attorney from the start.
CONCLUSION
Collaborating with a trademark attorney can improve your chances of obtaining trademark registration. The attorney will initiate the registration process by conducting a thorough search to determine if any other businesses in the UK are using a similar mark that may lead to confusion. If such a mark exists, the attorney can work with you to decide the appropriate course of action before submitting the application. Failing to conduct a comprehensive search before filing may lead to delays and expenses if a similar mark is already registered.
To ensure a smooth and cost-effective trademark registration process in the United Kingdom, it is important to be aware of the various costs involved. The expenses associated with filing a U.K. trademark can vary based on different options, such as filing through the Madrid Protocol or filing oppositions. It is recommended that you work with a local trademark attorney to help guide you through the process and minimise any potential complications.
