Introduction to trademarks and registered designs
Registered trademarks and designs are all around us. In our modern 21st-century economy, protecting intellectual property has become essential for companies seeking to establish and maintain their market presence. The logos used by every company we come into contact with and the designs of their products are registered to protect their brands and commercial interests. After all, companies invest vast sums in refining their product designs and marketing to ensure that their brand stands out from the crowd.
Registering trademarks and designs is essential in protecting intellectual property and ensuring that customers can differentiate products from those of competitors.
The importance of trademarks for your company
Trademarks lie at the heart of the identity of most companies. Afterall, where would McDonalds be without its “golden arches” and Apple without its partially munched apple? The importance of registered trademarks to companies cannot be overstated, as they provide the face of the business, encapsulating its values and enhancing its reputation and consumer trust.
Registering your trademarks should be a key aspect of your branding strategy and will:
- Provide you with vital legal protection in the event that a competitor tries to copy you
- Create assets that will become synonymous with the quality and values of your company and
- Evoke emotions that resonate with your customers and create a lasting connection.
By registering your trademark, you can take legal action against another person or business that uses your brand without your permission. You can also place the ® symbol within your branding as a way of warning others against using it. It will also allow you to sell and license your brand in the future.
Understanding the Process of Trademark Registration
There are several steps in successfully registering a trademark in the UK. The first step is to carry out a detailed trademark search to make sure that the words, sounds, logos, or colours you want to protect are unique and do not conflict with existing trademarks. It is also important to understand what you cannot register as a trademark. To ensure that your application is approved by the Intellectual Property Office (IPO), we recommend that you:
- Do not try to register a trademark that is the same or similar to a trade mark of another business that sells the same goods or services
- Avoid offensive content – ensure that your trademark does not include offensive language, swear words, or any inappropriate imagery
- Clearly describe the goods or services to avoid any ambiguity
- Avoid misleading terms – e.g. do not use the word “organic” if your products do not meet organic standards
- Choose a trademark that is distinctive
- Do not use national flags, generic shapes, official emblems, or hallmarks (e.g. coats of arms).
There are several ways to check if an existing trademark exists that is similar or the same as yours. You can either carry out a search on the official trademark database or pay £100 for a Right Start application. If you use the Right Start service, the Intellectual Property Office (IPO) will carry out a search on your behalf.
If you are satisfied that your mark is unique, the next step is to decide which trade mark class to apply for. This includes both the general category (class) and specific types of goods or services (term). You can choose more than one term, e.g. if you want to trademark a sportswear brand, you may use the terms “clothing”, “sports clothing”, and “athletic clothing”.
You can submit your trademark application online on the UK government website. If you have more than one trademark you want to register, you can submit a “series application” for up to six variations of your mark. The application fee is currently £170 for a single trade mark in a single class. An additional fee of £50 is payable for each further class.
Key Differences between Trademarks and Registered Designs
Trademarks protect brand identities, while registered designs safeguard the unique visual aspects of a product. Understanding the differences between these two forms of intellectual property rights is crucial for companies looking to protect their investments and innovations properly.
Trademarks are aspects of a brand that allow a customer to differentiate it from another brand. This can include any combination of words, sounds, logos, or colours. It may even include a sound (e.g. the Microsoft Windows startup sound). On the other hand, a registered design protects the appearance of a product, including its shape, configuration, decoration, colour, and pattern.
How Design Registration Protects Your Company’s Assets
Design registration offers legal protection for the innovative and ornamental features that make a product visually distinctive. This type of protection is particularly important in sectors where product appearance has a major bearing on consumer choices. By registering your design, you can prove that not only is it legally yours, but you created it.
Think of design registration as an additional layer of defence for your company’s intellectual property strategy. It ensures that the unique visual elements of your product are legally protected and, in doing so, prevents others from trying to copy or imitate its distinctive features. If done well, this will not only protect your company’s creative efforts and investment but also enhance its market exclusivity and position.
Steps to Registering a Design in the UK
For companies operating in the UK, understanding and navigating the process of design registration involves several steps and key considerations. The first step is to check whether your design has already been registered either as a UK-registered design or through the EU Intellectual Property Office (EUIPO) or World Intellectual Property Organisation (WIPO). You can pay a fee of £24 for the IPO to carry out a search of UK-registered designs on your behalf.
The next step is to ensure that your design is capable of being registered. You can register a physical shape, configuration (i.e. how different elements of a design have been put together), decoration, colour, or pattern. You cannot, however, register a design that is offensive, uses a national flag or hallmark, or relates to the functionality of a design.
If you are satisfied that your design is unique and meets the criteria for registration, you can apply for registration online. You will need to pay a fee, with the amount depending on the number of designs you submit, as follows:
|Number of designs
|Online filing fee
|Up to 10
|Up to 20
|Up to 30
|Up to 40
|Up to 50
Once you have submitted your application, the IPO will carry out a number of checks and issue your registration normally within three weeks.
Common Mistakes to Avoid in Trademark and Design Registration
All too often, companies seeking registration of their trademarks or designs make mistakes which lead to refusal or impaired legal protection. Some of the most common mistakes to avoid in trademark design registration are as follows:
- Failing to carry out a detailed search of existing trademarks and design. This can result in the submission of applications for trademarks that are similar or identical to existing ones, leading to potential conflicts and rejections
- Not adequately describing the goods or services to be registered. While the IPO may grant the application, the mark or product may not be properly protected
- Using the wrong classifications
- Using names that design that are too generic
- Not seeking protection in the required geography
- Not protecting all trademarks and designs, and
- Not keeping trademarks and designs up to date
How to maintain and renew your trademarks and designs
Ensuring the protection of your intellectual property rights is not a one-time effort; it requires ongoing commitment, effort, and planning. After all, your company is always evolving, as are its brand identity and products. Take, for example, the Apple logo, which, while it has remained broadly the same since it was created, has undergone four major changes over time, allowing its use on different types of devices.
Trademarks in the UK must be renewed every ten years to ensure ongoing protection. In addition, design registration must be renewed every five years. The renewal process typically requires the payment of renewal fees and compliance with specific renewal requirements. Not applying for renewal may result in the loss of intellectual property rights. For this reason, we recommend putting in place a robust internal process and reminders to ensure that IP rights are kept current and renewed in good time when necessary.
Dealing with trademark and design infringements
Even if you have properly registered your trademarks and designs and kept these up to date, infringements can still happen. Keeping on top of any potential trademark and design infringements will allow you to retain your market position and reputation.
Infringements can take various forms, including the use of identical or similar trademarks without permission and the blatant replication of protected designs. If you are concerned that another company is trying to copy your marks or designs, you have a range of possible legal tools at your disposal. In the first instance, you may consider sending a “cease and desist letter”. Another option is alternative dispute resolution, such as mediation, to reach an agreement with the offending party outside the court system to stop their actions. If this proves ineffective, you can initiate legal proceedings. If a judge believes that your rights have been breached, the offending party may be ordered to cease what they are doing, pay you compensation and cover your legal costs.
Conclusion: Leveraging Trademarks and Registered Designs for Business Success
Registered trademarks and designs are not mere legal formalities; they are essential in securing a company’s intellectual property and brand resilience. By carefully completing the registration processes and avoiding the common pitfalls outlined in this article, your business can leverage these protections. In turn, this will foster innovation and investment, build enduring brand recognition, and allow your business to achieve long-term success, both in the UK and internationally.