Having worked hard to develop your products and services, trade mark registration represents an important next step in protecting your company’s brand and reputation. Not only will your trade mark give your company exclusive rights to use the brand it has created, but it will also signal to customers and investors that your brand is worthy of legal protection. In this article, we will explain how you can trade mark your company brand.
What is a trade mark?
A trade mark is a type of intellectual property, such as a sign, design, or expression, that allows a company to differentiate its products and services from those of another seller. The terms “trade mark” and “brand” are often used interchangeably; this makes sense because branding was traditionally used as a way to mark the ownership of livestock. As such, brands and trademarks are still used to convey the message “I made this” or “this is mine”.
Trade marks can take many forms, including:
- Words (e.g. “I’m loving it” used by Mcdonald’s)
- Sounds (e.g. the lion roar used by 20th-century fox)
- Colours (e.g. the purple colour used by Cadburys or the canary yellow colour used for Post-it® notes)
- Logos (e.g. the tick used by Nike).
- Shapes (e.g. the guitar shape used by Fender guitars)
A trademark can also be a combination of any of the above.
In the UK, a trademark cannot, however, be offensive, misleading, a 3D shape, common and non-distinctive, or appear similar to state symbols such as flags or hallmarks.
When deciding whether a particular mark is suitable, it is important to consider a range of factors, including whether it “fits” the intended purpose, whether it may have inappropriate connotations, and whether it is suitable for the country in which the product or service will be sold. Just because a mark is suitable in one country does not mean it will be in another.
How do I register a trade mark?
To register a trade mark, you will need to complete and submit a trade mark application form with the necessary documents and fees. For UK trade marks, you will need to submit your trade mark application to the UK Intellectual Property Office (IPO). For EU trade marks (EUTMs), you will need to apply to EUIPO (the EU Intellectual Property Office).
There are six main steps in the trade mark IPO registration process, as follows:
- Preparation – before you submit your trade mark application to the IPO, you will need to determine which classes (i.e. groups of products or services) against which to register your trade mark. Under the current classification structure, there are 45 classes; classes 1-34 are designated for goods and classes 35-45 are for services. Before proceeding, and most importantly, you will also need to perform a search to verify if your trade mark has been registered. To make this process easier, in 2020, the IPO introduced a trade mark pre-application service based on artificial intelligence (AI) technology. The AI tool searches all of the existing trade marks for similar marks and presents these to the customer. This, in turn, significantly improves the chances of successfully registering a trade mark. A specialist in trade mark searches can also carry out this process for you.
- Prepare the trade mark application form – this will include details of what you wish to register, such as a logo, words, or colours, an image or illustration of what you want to trademark, and the classes you want to register.
- Submit your application online or by post. You will need to pay an application fee of £170 and an extra £50 for each additional class.
- Registration process – On receipt of your trade mark application, it will be checked over by the IPO within 2 weeks. They will then perform a detailed search for similar marks and publish the application in the trade marks journal within 2 months. The trade mark will then be registered if there are no objections.
- Opposition – If an objection is raised regarding your trade mark application, there are three general ways forward; a) to discuss the matter with the person who raised the objection, b) withdraw the trade mark application, or c) defend your application legally.
- Registration completion – once registered, the IPO will send you a trade mark registration certificate. This will last for a period of ten years, after which you will need to renew your trade mark.
Why should I register a trade mark?
The registration of a trade mark is not mandatory, but it is recommended, especially if a business asset is valuable, commercially exploitable, easy to protect and enforce, will deter those who may seek to infringe the brand, and can be renewed indefinitely.
If a company does not have a registered trade mark, they are then reliant on common law if another party “passes off” or infringes its mark. Passing off occurs when one party offers its goods or services in a manner that deceives the customer into believing that they are purchasing the goods or services of another party. Unfortunately, taking legal action under common law relating to passing off can be extremely costly, time-consuming and expensive. This is, in part, because there is an onus on the party bringing the action to prove their ownership of goodwill or reputation in the mark and that use of their mark amounts to a misrepresentation which is likely to cause harm. New brands often struggle to provide sufficient evidence of such goodwill.
What rights does trade mark registration provide?
Registering a trade mark provides a brand owner with the statutory right to exclusively use the mark relating to its goods or services. Because the brand owner has this exclusive right, they can sue for trade mark infringement against anyone who uses an identical or similar mark when selling identical, similar, or dissimilar goods or services without their express permission. By registering your trademark, you can also place the ® symbol alongside your brand as a way of deterring others from using it. It is important to note that trade marks last for a period of ten years, at which point they must be renewed.
When should I register my trade mark?
Trade mark applications are typically processed on a “first come, first served basis”; hence it is advisable to apply during the process of product development. Doing so will make sure that the registration process has been completed or is nearing completion when the product or service is ready for market. In addition, applying early in the product development process means that existing, pending, and similar trade marks will be discovered, allowing the prospective applicant to make changes to their mark and avoid the potential for their application being blocked.
Why might a trade mark registration application be refused?
Under section 1 and section 3 of the Trade Mark Act 1994 and Articles 4 and 7 of the EU Trade Mark Regulation, an application to register a trade mark may be refused for several reasons, including if:
- It is not a sign that can be represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
- It consists exclusively of a characteristic which results from the nature of the goods, or which is necessary to obtain a technical result, or which gives substantial value to the goods.
- It is deceptive.
- It is contrary to public policy or to accepted principles of morality.
- It is a specially protected emblem.
- Its use is prohibited by laws relating to traditional terms for wine or spirits, plant varieties, designations of origin or geographical indications.
In addition, a trade mark registration application may be refused if:
- It is devoid of distinctive character.
- It consists exclusively of an indication or sign which may designate the kind, quality, quantity, intended purpose, value, geographical origin or the time of production of the goods or of rendering of the service or other characteristics of the goods or service.
- It consists exclusively of a sign or indication which has become customary in the current language or in the bona fide and established practices of the trade.
By registering your trade mark, you will ensure that you have the exclusive right to use your company’s unique sign, slogan, logo, colour, and/or shape. As you build your brand and reputation, your trade mark will become increasingly important as it will deter others who might seek to take advantage and profit from your hard work. If you need assistance with your trade mark application, including searching for existing marks that are similar to yours, checking whether your mark is likely to be approved, preparing your trade mark application, or dealing with the refusal of a trade mark registration, it is important to seek the expertise of a legal professional who specialises in this field; don’t leave anything to chance when it comes to protecting your brand.