Trade Mark Solicitors in London

What trade mark law covers in England and Wales

A trade mark is any sign that distinguishes one business's goods or services from another's: a name, logo, slogan, colour, shape, sound or combination of them. The trade mark solicitors London founders, brand owners and in-house teams instruct work on the whole life of that asset: choosing a name that can be protected, registering it in the right classes and countries, licensing it, and stopping copycats and counterfeiters.

Trade marks are usually a company's most valuable intangible after its people. They carry customer goodwill, they are pledged as security in financings, and they are among the first assets a buyer's lawyers check on due diligence. A weak or unregistered brand is a recurring reason for price chips and specific indemnities in M&A.

The legal question tends to arise at four moments: before launch (can we use and own this name?), on expansion (is it protected abroad?), on a transaction (who owns it and is it valid?), and when a competitor or counterfeiter appears (can we stop them, and how quickly?).

The legal framework: statute, registry and courts

The Trade Marks Act 1994

The core statute is the Trade Marks Act 1994, which applies across the whole United Kingdom. Section 3 sets the absolute grounds for refusal: signs that are descriptive, devoid of distinctive character, deceptive or contrary to public policy. Section 5 sets the relative grounds, where a mark conflicts with an earlier mark or right. Section 10 defines infringement, and section 46 allows a registration to be revoked if it has not been genuinely used for a continuous five-year period.

For most clients, the trade mark solicitors London teams field start and finish with this Act. A UK registration lasts ten years and can be renewed indefinitely. It gives the owner the exclusive right to use the mark for the registered goods and services and a statutory cause of action against infringers, without having to prove reputation or goodwill.

The registry and the 2026 fee changes

Applications are examined and registered by the Intellectual Property Office (UKIPO). On 1 April 2026 the UKIPO increased its trade mark fees for the first time in decades: an online application now costs £205 for one class plus £60 for each additional class, and renewal costs £245 plus £60 per additional class. Oppositions, invalidity and revocation actions also cost more. An action paid at the wrong fee risks being treated as not filed, so check the current schedule before filing.

The 13th edition of the Nice Classification applies to applications filed from 1 January 2026. It moved and reworded a number of goods and services, so specifications drafted from older templates should be checked.

Courts and enforcement bodies

Infringement and passing off claims are heard in the Chancery Division of the High Court, within the Business and Property Courts, or in the Intellectual Property Enterprise Court (IPEC). IPEC caps damages at £500,000 (unless the parties agree otherwise) and recoverable costs at £60,000 for the liability stage, and its small claims track handles straightforward claims worth up to around £10,000. Counterfeiting is also a criminal offence under section 92 of the 1994 Act, investigated by Trading Standards and others.

Key recent case law

In SkyKick UK Ltd v Sky Ltd [2024] UKSC 36, decided on 13 November 2024, the Supreme Court held that applying for a mark with no intention to use it across the full specification can be bad faith, and that the breadth of a specification can support that inference depending on the circumstances. The practical lesson: claim what you use or genuinely plan to use, not everything a template allows.

In Lidl v Tesco [2024] EWCA Civ 262, the Court of Appeal upheld findings of infringement and passing off over Tesco's Clubcard Prices logo, showing how an unregistered-looking get-up and a registered background device can together carry a powerful price message.

Unjustified threats

The Intellectual Property (Unjustified Threats) Act 2017 lets a person aggrieved by an unjustified threat of trade mark infringement proceedings sue the person who made it. Threats to retailers and other secondary actors carry the most risk. Letters sent to a manufacturer or importer, and "permitted communications", are treated differently, so the first letter in any dispute needs careful drafting.

Choosing a route: how trade mark solicitors London clients rely on compare the options

The first strategic decision is where, and in what form, to protect the brand. Since 1 January 2021 an EU trade mark no longer covers the UK. EU registrations existing at that date were cloned into "comparable" UK marks, but new filings need a separate UK application or a UK designation.

Word mark or logo?

A word mark protects the name in any font or style and is usually the most valuable registration. A logo or stylised mark protects the visual identity but is narrower: a competitor using the same word in a different design may fall outside it. Most brand owners file the word first and the logo second, budget permitting.

Drafting the specification

After SkyKick, a broad specification is a liability as well as a shield. Good trade mark solicitors London businesses use will draft around current products, a realistic three-to-five-year plan and the core goods where infringers are most likely to appear. Overclaiming invites bad-faith attacks and partial revocation; underclaiming leaves gaps that a squatter can fill.

Clearance before launch

Trade mark solicitors London founders consult before launch will almost always recommend a clearance search. It looks for identical and similar earlier marks, company names and domain names in the relevant classes and markets. It is far cheaper than a rebrand after an injunction. The search result is a risk assessment, not a guarantee, and should be refreshed before major launches.

The UK registration process step by step

A straightforward UK application with no objection or opposition can register within a few months. Objections and oppositions extend that considerably.

1. Clearance and strategy. Search the UK and target markets, choose word and logo filings, and map the classes and countries in which you need protection.
2. Draft and file. File online with the UKIPO, naming the owner correctly (the company, not a founder personally) and drafting the specification to fit the Nice 13th edition.
3. Examination. The UKIPO examines the application on absolute grounds and searches earlier marks. It notifies owners of earlier UK marks it finds but does not refuse on relative grounds of its own accord.
4. Respond to objections. Argue distinctiveness, file evidence of acquired distinctiveness or narrow the specification within the deadline set in the examination report.
5. Publication and opposition. The application is published in the Trade Marks Journal. Third parties have two months to oppose, extendable to three months by filing a notice of threatened opposition.
6. Registration. If there is no opposition, or it fails, the mark registers. Protection runs from the filing date for ten years.
7. Extend and record. Use the UK filing as a base for international applications within the six-month Paris Convention priority period, and record licences and assignments with the registry.
8. Maintain. Renew every ten years, keep evidence of use, and watch the register for conflicting applications.

Enforcing a brand: infringement, passing off and counterfeits

Infringement of a registered mark

Under section 10, infringement covers use in the course of trade of an identical sign for identical goods or services; of an identical or similar sign for identical or similar goods where there is a likelihood of confusion; and, for marks with a reputation, use that takes unfair advantage of or is detrimental to the mark's distinctive character or repute. Remedies include injunctions, damages or an account of profits, delivery up and publicity orders.

Passing off

Where nothing is registered, the owner must rely on the common law tort of passing off. The claimant must show goodwill in the UK, a misrepresentation likely to deceive the public and resulting damage. It is often pleaded alongside infringement to cover get-up, packaging and other elements outside the registration.

Choosing a forum

Forum choice is one of the first calls trade mark solicitors London claimants and defendants make. IPEC suits disputes where the value is moderate and the issues are focused; its costs caps limit downside risk for both sides. The High Court suits high-value claims, complex evidence and cases where an urgent interim injunction is needed. Our IP litigation team handles both, and where advocacy in the higher courts is required we instruct specialist counsel.

Counterfeits and online infringement

Brand owners can apply to HMRC and Border Force for customs detention of suspected counterfeit goods, and use the notice-and-takedown procedures of marketplaces, app stores and social platforms. Persistent online infringement may justify a High Court blocking order against internet service providers.

The strongest enforcement position is built years before the dispute: a clean chain of title, a sensible specification and dated evidence of use.

Documents and evidence to assemble

Whether filing, defending or enforcing, the same documents decide most outcomes. Trade mark solicitors London clients work with will ask for the following early.

• Ownership records. Registration certificates, assignments, and IP assignment clauses in founder, employee and designer agreements. Our guide to IP assignment versus licence explains why this matters.
• Evidence of use. Dated invoices, packaging, website captures, advertising spend and sales figures by territory and product. Revocation actions and non-use defences turn on this.
• Licences and coexistence agreements. Who may use the mark, where, on what goods and under what quality controls.
• Design and creative files. Logo artwork with dates and authorship, which also supports copyright claims.
• Infringement evidence. Test purchases, screenshots with URLs and timestamps, examples of actual confusion and customer complaints.
• Prior correspondence. Earlier letters, undertakings and settlements, which may limit or support a fresh claim.

Risks and common mistakes

Cross-border brand protection: Bangladesh, the EU, the Gulf, Singapore and China

Trade marks are territorial, so trade mark solicitors London exporters rely on must think beyond the UKIPO. A UK registration gives no rights in Dhaka, Dubai or Shenzhen, and a strategy for each market is usually needed.

Bangladesh. Trade marks are registered with the Department of Patents, Designs and Trademarks in Dhaka. Bangladesh is not yet a member of the Madrid Protocol; WIPO was supporting its preparation for accession in 2026. For now, protection requires a national filing through a local agent. TRW & Co's Dhaka office handles filings, oppositions and enforcement locally, which matters for apparel, food and consumer brands sourcing or selling there.

The EU. UK businesses selling into Europe need an EU trade mark or national filings. EU and UK oppositions and infringement claims now run separately, and evidence of use must be shown in the relevant territory.

The Gulf. The UAE and other Gulf states operate their own registries, and the UAE is a Madrid member. Registration is important before appointing distributors, because distribution agreements often stand or fall on who owns the local mark.

Singapore and China. Singapore is a straightforward Madrid jurisdiction and a regional hub. China is a first-to-file country where early filing, including Chinese-character versions of the brand, is essential for manufacturers and exporters.

The Madrid System administered by WIPO allows one international application, based on a UK application or registration, to designate many member countries. It is efficient, but local counsel are still needed to respond to provisional refusals.

How trade mark solicitors London businesses instruct at TRW & Co help

We act for founders, growing brands and established companies, in London and through our offices in Dhaka, Singapore and Dubai. Our trade mark work sits within our wider intellectual property practice.

For practical background, read our guides to registering a trade mark in the UK and trade mark infringement and passing off. You can also browse all our practices.

Checklist for decision-makers

• Is every brand you rely on registered, in the company's name, for the goods and services you actually sell?
• Have you run clearance searches for new names before spending on launch, packaging or domains?
• Do your specifications match current and realistically planned use, rather than a broad template?
• Do you hold protection in each country where you manufacture, sell or plan to expand, including Bangladesh, the EU, the Gulf and China where relevant?
• Can you produce dated evidence of use for each registered mark in each territory?
• Are founder, employee, agency and designer agreements clear that brand IP belongs to the company?
• Are licences and distribution agreements recorded and do they include quality controls?
• Is someone watching the UK and foreign registers for conflicting applications?
• Before sending a threat letter, has the threats regime been checked?
• Have renewal dates and the 2026 fee changes been diarised?

To discuss a filing, opposition or infringement, contact TRW & Co at our Holborn office, Holborn Gate, 330 High Holborn, London WC1V 7QH, or email info@trw.co.

Frequently asked questions

Sources and official materials

1. Trade Marks Act 1994 — UK statute on registration, infringement and revocation
2. Intellectual Property Office — UK trade mark registry, fees and guidance
3. Register a trade mark (GOV.UK) — Official guide to the UK application process
4. SkyKick UK Ltd v Sky Ltd [2024] UKSC 36 — Supreme Court on bad faith and broad specifications
5. Intellectual Property (Unjustified Threats) Act 2017 — Rules on threats of infringement proceedings
6. Intellectual Property Enterprise Court — Court for lower-value IP claims, with caps
7. Madrid System (WIPO) — International trade mark registration system

General information only, current as at 21 October 2026. It is not legal advice and does not create a solicitor–client relationship. It reflects the law of England and Wales unless stated otherwise; Scotland and Northern Ireland have separate legal systems, and the law changes frequently. Check current official sources and take advice on the facts of your matter.