UK Trade Mark Registration for Foreign Brands: Step by Step

UK trade mark registration is open to businesses from any country. A foreign company follows the same steps as a British one, with one extra rule: it must give the UK Intellectual Property Office (IPO) an address for service in the UK, Gibraltar or the Channel Islands. If nothing goes wrong, registration usually takes around 3 to 4 months, and a standard online application starts at £205.

This step-by-step guide is for brands based in the UAE, Iran, the EU or elsewhere that want to protect their name or logo in the UK. The fees and timings come from GOV.UK guidance.

Why foreign brands need UK trade mark registration

A trade mark is a sign, such as a name, logo or slogan, that tells customers your goods or services come from you. Registering it gives you a legal right to stop others using the same or a similar sign for similar goods or services.

Many businesses assume their EU trade mark still covers Britain. It does not. Since 1 January 2021, EU trade marks no longer give protection in the UK. A home registration in Dubai or Tehran does not protect you in the UK either.

A UK registration protects your brand in the UK and the Isle of Man. (Guernsey and Jersey have their own systems.) Once registered, you can:

• take legal action against people who use your brand without permission, including counterfeiters;
• use the ® symbol next to your brand to warn others;
• sell or license your brand to other businesses.

Without a registration, you may still be able to rely on “passing off”. This is a court claim against someone who pretends to be you. But you must prove that you have a reputation in the UK, that customers were misled, and that you suffered damage. That is much harder than relying on a registered mark.

UK trade mark registration at a glance

Step 1: Check that your mark can be registered

Not every name or logo can be registered. Under GOV.UK guidance, a trade mark must not:

• describe the goods or services it covers, for example “Fresh Bread” for a bakery;
• be too common or non-distinctive, such as a general slogan;
• be offensive or misleading;
• be just a generic shape linked to your business;
• use national flags without permission, or official emblems and hallmarks.

Your mark can also be refused or challenged if it is the same as, or similar to, an earlier mark for the same or similar goods or services. So search the UK trade marks database before you file. If you find a similar mark, get advice first, because the IPO will tell the owner of that earlier mark about your application.

Step 2: Choose your classes and terms

Every application must cover at least one class and one term. A class is a broad category, such as class 25 for clothing. A term is a more specific description inside that class, such as “sports clothing”.

This is where many foreign applicants go wrong. Keep these points in mind:

• your protection only covers the classes and terms you choose;
• GOV.UK suggests choosing terms that match your plans for the next five years;
• you cannot add terms after you submit the application;
• claiming terms you never plan to use can lead to challenges and legal costs;
• each extra class adds to the fee.

If you are translating a product list from Arabic or Persian, check that the English terms describe what you actually sell. A loose translation can leave important products unprotected.

Step 3: Appoint a UK address for service

This is the rule that most often trips up overseas brands. An address for service is the address where the IPO and other parties send official letters about your trade mark. For UK trade marks, it must be in the UK, Gibraltar or the Channel Islands. If you do not give a valid one, your application could be treated as withdrawn.

Most foreign businesses use a UK law firm or trade mark representative as their address for service. Choose someone reliable, because a missed letter can mean a missed deadline.

Step 4: File the application and pay the fee

You can apply online or by post. You will need a clear image or text of the mark, the owner’s details (person or company), and the list of goods or services with their classes and terms.

Right Start lets the IPO check whether your application meets the rules before you pay the full fee. After you receive the Right Start report, you have 28 days to decide whether to continue.

If you already have a trade mark at home, there is another route. You can protect it in the UK through an international application under WIPO’s Madrid System that designates the UK. Whether this is better than a direct UK filing depends on your countries, budget and brand plans.

Step 5: Examination

The IPO examines your application and sends you a report within 2 to 3 weeks. If the report raises objections, for example because your mark is too descriptive, you have 2 months to resolve them.

The IPO also searches for identical or similar earlier marks. If it finds any, it tells you and the owners of those marks. This does not block your application by itself, but it often leads to an opposition.

Step 6: Publication and the opposition period

Once any objections are resolved, your application is published in the Trade Marks Journal for 2 months. During this time, anyone can oppose it. This period can be extended to 3 months if someone files a notice of threatened opposition (form TM7a) within the first 2 months.

If someone does oppose your mark:

• you cannot register the mark for the opposed goods or services until the dispute is resolved;
• you have 2 months from service of the opposition to file a defence on form TM8;
• both sides can agree a “cooling-off” period of 9 months to negotiate, which can be extended by a further 9 months to a maximum of 18.

Your options are to negotiate, narrow or withdraw your application, or defend it. Defending involves legal costs, so a good search at Step 1 is the best way to avoid this stage.

Step 7: Registration and renewal

If there are no problems, you receive a registration certificate. A UK trade mark lasts 10 years and can be renewed every 10 years. After registration, keep using the mark for the goods and services it covers, and watch the market for copycats.

Practical examples

Example 1: A Dubai online shop selling to customers in London. A skincare brand sells online to UK buyers and has a UAE trade mark. A UK seller starts using a very similar name on a marketplace. Because the UAE mark gives no UK protection, the brand has little to act on. It should search the UK register, file a UK application in the right classes (for example cosmetics), and appoint a UK address for service. Once registered, it can use the registration to challenge copycats.

Example 2: An Iranian food exporter entering UK supermarkets. The exporter translates its product list from Persian and files for “food products” in one class. Later it learns that some of its products, such as drinks, fall in other classes and are not covered. Because terms cannot be added after filing, it must file a new application. The lesson: get the classes and terms right before you file.

What to do next

1. Search first. Check the UK register for identical and similar marks. Our UK trade mark clearance search service can do this for you.
2. Draft the specification. Choose classes and terms that match your plans for the next five years. See our trade mark classes and specification service.
3. Arrange an address for service. Appoint a UK representative so your application is not treated as withdrawn.
4. Choose your filing route. Compare a direct UK application with a Madrid designation of the UK.
5. File and monitor. Our UK trade mark registration service handles filing for overseas brands. If you face objections or an opposition, our objections and oppositions team can help.
6. Plan your wider UK set-up. If you are expanding from the Gulf, read how to open a UK company from Dubai. To discuss your brand, contact us.

This article is general information, not legal advice for a specific case.

Frequently asked questions

Can a company outside the UK register a UK trade mark?

Yes. A business based anywhere can apply. The only extra requirement is an address for service in the UK, Gibraltar or the Channel Islands. Without one, the application could be treated as withdrawn.

How much does UK trade mark registration cost?

A standard online application costs £205 for one class, plus £60 for each extra class. A paper application costs £250 for one class, plus £60 for each extra class. Professional fees for searches or a UK representative are extra.

How long does it take to register a trade mark in the UK?

If there are no objections or oppositions, it usually takes around 3 to 4 months from application to registration. Objections or an opposition can make it much longer.

Does my EU trade mark protect my brand in the UK?

No. Since 1 January 2021, EU trade marks no longer give protection in the UK. You need a UK registration, or an international registration that designates the UK.

How long does a UK trade mark last?

A UK trade mark lasts 10 years. You can renew it every 10 years to keep it in force.

Sources

• Register a trade mark (GOV.UK)
• Register a trade mark: what you can register (GOV.UK)
• Register a trade mark: apply (GOV.UK)
• Register a trade mark: after you apply (GOV.UK)
• Register a trade mark: when your trade mark is registered (GOV.UK)
• Address for service for intellectual property rights (GOV.UK)
• Standard opposition proceedings before the Trade Marks Tribunal (GOV.UK)
• Changes to EU and international designs and trade mark protection (GOV.UK)