Trade marks

Trade marks

What are they and how to register one for your business

Trade marks can be owned by celebrities, multinationals and local businesses. Trade marks can be any sign that identifies yourself as the owner or a symbol that makes it clear that your goods and services belong to you.

It is the symbol that customers use to find your products and services on the market. Trade Marks are only available to the owner.

Registering a trade mark heightens the protection it receives and deters others from using it. By registering your mark, the law presumes that you own that mark and all that must be proved is that an identical mark was used without consent for the same goods or services. When you register your trade mark, you’ll be able to a) take legal action against anyone who uses your brand without your permission, b) put the Ⓡ symbol next to your brand to show that it is yours and warn others against using it c) sell and licence your brand.

What is a trademark?

Trade marks can be registered for many things, but logos and names are the most popular. Trade marks can be anything that allows consumers to differentiate your products or services from others.

If you think of Pringles, you’ll hear a certain pop. Shell will bring up a particular shade. Maltesers is known for its “bouncy” chocolate balls. Yes, sounds, colours, and shapes can all also be registered as trade marks.

It is more difficult to register these trade marks, which is why they are rarer.

All the following are possible to register:

  • Word
  • Logo
  • Shape
  • Colour (single or a combination)
  • Sound
  • Multimedia
  • Position
  • Pattern
  • Motion
  • Hologram

Trade marks must be distinctive and cannot be used in conjunction with any other registered trade marks. You could also attempt to cause confusion such as naming a sports brand Nake, as it could be mistaken for Nike.

Another common misunderstanding is to think that because you registered a company name you have secured your rights. You have virtually no legal rights to prevent someone from using your logo or company name by registering it as a trade mark or having a domain name.

If you start using a logo or name without checking it is still free to use you risk getting a letter telling you to stop using the mark that infringes a registered trade mark. It is possible that someone else will register it as a trademark and attempt to block you from using your brand name. While you may have the right to challenge this on the basis any goodwill you have accumulated via “unregistered” rights, it can be expensive and time-consuming for you to prove that you have rights to an earlier mark.

And even if you take the long-term view registering a trade mark is crucial. As your company’s reputation grows people will begin to copy you. You can stop this by taking action with the protection of registered trade marks.

How to register your trade mark in the UK

Check if your trade mark is already registered

We conduct a search in trade marks databases before we send your application to check whether anyone has already registered an identical or similar trade mark for the same or similar goods or services.

Trade mark classes represent the goods and services the trade mark will be used on. It is important that you choose categories that best represent the goods and services that you provide, or intend to provide, under your required trade mark. If your mark is used on different products, we may need to file trade marks in multiple classes.

If your trade mark is not distinctive for the class of goods and services you provide, it cannot be registered.

To ensure your mark can be registered, it needs to be compared against trade marks already registered.

The mark cannot be registered if:
  • Your mark is identical to a mark already registered (and for identical goods/services);
  • Your mark is identical to a mark already registered (and for similar goods/services and likely to cause confusion in the mind of the public);
  • Your mark is similar to a mark already registered (and for identical/similar goods/services that are likely to cause confusion in the mind of the public); and
  • Your mark is identical/similar to a mark already registered but the goods/services are different (eg where the mark is ‘famous’).

Feedback

Once you’ve applied, you’ll get feedback on your application (the ‘examination report’) within 20 days – you have 2 months to resolve any problems (eg you might have to get the consent of the previous rights holder if that person has already registered or applied to register the same or a similar mark).

Publication

If the examiner has no objections, your application will then be published in the  trade marks journal for 2 months, during which time, anyone can oppose it.

Registration

Your trade mark will be registered once any objections are resolved and you’ll get a certificate confirming this.

In the event that your application is opposed, you can either:

  • Withdraw your application
  • Talk to the person making the opposition
  • Defend your application

Be aware that you won’t be able to register your trade mark until the matter is settled and you may have to pay legal costs if you want to challenge the opposing party.

Making people aware of your trade mark

The ‘™’ symbol is used where you haven’t registered your trade mark yet or are in the process of registering your trade mark. Whilst it makes people aware that the trade mark is being used, it doesn’t provide you with automatic rights, as registration would.

To further protect your trade mark, you should make it clear that it has been registered. This can be done by placing an ‘®’ (registered) mark somewhere prominent around your trade mark or on products using the trade mark. This can only be done once the trade mark has been registered with the IPO or EUIPO.

Although it is not required, you can further protect your mark by providing more detailed information (eg design number and design owner) somewhere less prominent, like in the product description.

Register a trade mark in the EU

If you want trade mark protection in countries that are members of the European Union (EU), you can apply for a European Union Trade Mark through the European Union Intellectual Property Office (EUIPO). The registration process generally takes between 5 to 8 months and gives the trade mark owner the legal right to take action against others who use the brand name without permission.

The UK remained part of the EU trade mark system throughout the transition period, ending on 31 December 2020. During this period, EU-registered trade marks and design rights continued to benefit from trade mark protection in the UK.

From 1 January 2021, new EU-registered trade marks are protected in the EU, but not in the UK. However, all pre-existing EU trade marks will continue to be protected in the UK through the registration of a ‘comparable’ trade mark at the Intellectual Property Office (IPO). This process is automatic, so if you currently have EU-registered trade marks they will be automatically copied across into UK-registered trade marks.

Businesses, organisations or individuals that had ongoing applications for an EU trade mark by the end of the transition period have an extension of nine months from 31 December 2020 to apply in the UK for the same protections. This means that such businesses, organisations or individuals have up to and including 30 September 2021 to apply for a UK trade mark.

The departure from the EU has no impact on the protection and validity of UK-registered trade marks within the UK.

What happens if someone copies my work?

You will likely be copied more often if you are well-known. The UK’s Intellectual Property Enterprise Court is a cost-effective way to resolve trade mark disputes.

Our legal professionals can give you advice on what action to take. This will often involve constructive engagement instead of an adversarial approach in order to avoid having to go to court.

A registered trade mark allows you to focus on your business growth and is a valuable asset you can use or sell.

Expert support

Registering a trade mark is a crucial step in your business’s journey and can be one of your most valuable assets. You do not want someone else beating you to the punch and registering the trademark you use for your brand. Your trademark will protect your product, brand or service and prevent others from using similar signs.

Chic Consultants offers a cost-effective trademark search and registration service.

We receive the most current official information from the UK or EU Intellectual Property Office. This ensures that the searches we conduct are accurate. Our trademark specialists have long experience in the registration of trademarks. Their goal is to provide an easy and quick search and registration process.