Over 85,845 trade mark applications were filed by businesses in the UK in 2022, an increase of 7.3% over 2022, showing an increasing trend of brand protection in a competitive market.
But were all these required?
This article outlines trade mark definition, key benefits, registration benefits, the process, and alternatives.
What is a trademark?
Trade marks are a type of intellectual property.
A trade mark distinguishes goods or services of one business from other businesses. It includes words, logos, sounds, colours, and shapes.
Technically, a trademark relates to goods only, and a service mark relates to services. However, outside of legal circles, it is unusual to talk about service marks.
Your business name, which may also be your company name if your business is incorporated, forms part of your brand identity.
What are the benefits of registering a trademark?
Registering a trademark grants you exclusive rights to use the mark for your goods or services.
A registered trademark offers legal protection, strengthens brand identity, and increases business value. While every creator has some rights in their brand names and marks, a registered trademark strengthens those.
How does a registered trademark provide legal protection?
A registered trademark grants you exclusive rights and the ability to take legal action against infringers. You can enforce registered trademark rights more effectively than unregistered rights.
You can ask for injunctions to stop infringement, request damages for losses, or ask for an account of profits. Only registered trade marks, as registered trade marks, can use the ® symbol, which helps discourage potential infringers.
How does a trademark enhance brand identity?
A trademark establishes a strong brand image and helps consumer recognition.
For example, McDonald's golden arches instantly show the brand's fast food offerings and global presence. This recognition creates customer loyalty and repeat purchases.
By stopping others from using a similar mark, a registered trademark helps maintain your brand's uniqueness and develops customer trust.
How does a trademark increase business value?
A registered trademark enhances company worth as a valuable commercial asset as an intangible asset.
It draws in investors and brings value during a business sale.
You can license or sell trademarks, making additional revenue streams.
For instance, a clothing brand with a registered trademark could license its logo for use on accessories, growing its market reach and income.
Well-established trademarks, like Nike's swoosh logo, can be valuable assets worth billions.
When is trade mark registration, or trademark registration, not necessary?
Trademark registration is not always needed for every business name. Some situations mean registration is not suitable or unnecessary.
What types of business names are difficult to register as trade marks?
The UK Intellectual Property Office ('IPO') does not accept names that merely describe goods or services or lack distinctiveness. 'Quality Plumbing Services', 'Fast Pizza Delivery', or 'London Taxi Company' cannot usually be registered as trade marks. These names simply describe the business's offerings or location, without unique elements.
Some descriptive marks can be registered after extensive use and recognition in the marketplace - a concept known as 'acquired distinctiveness'. British Airways has acquired distinctiveness through years of use and marketing, despite being a descriptive name.
When might a business not need immediate trade mark protection?
Businesses with very limited use of their name or a small market presence may not gain from immediate brand safeguarding. A local handyman service operating in a small town with no plans to expand might not benefit from the cost and effort of trade mark protection. Their limited geographical reach and customer base reduce the risk of name confusion or infringement.
Businesses in niche markets or highly specialised fields with little competition might not need immediate trade mark protection.
You should reassess this need periodically as your business grows or you start trading in new markets. What appears unnecessary now may become important later.
How do I choose a business name suitable for trademarking?
Pick a distinctive business name for your business. Choose invented words, arbitrary words, or words unrelated to your product or service. Invented words include 'Kodak' for cameras or 'Xerox' for photocopiers.
Words unrelated to your offering, such as 'Amazon' for an online marketplace, also work well.
Conduct a comprehensive search for existing trademarks or any existing trademark similar marks before deciding on a name. Check the UK IPO database, Companies House register, and do general internet searches. These searches help you avoid potential conflicts and prevent potential legal issues and expenses. They also reveal if your chosen name is already in use or too similar to existing trademarks.
What are the legal requirements for a trademark in the UK?
UK trademark law outlines specific criteria for registration. Your mark must be distinctive, capable of being represented clearly and precisely, and not fall under absolute grounds for refusal. It must not be identical or similar to earlier marks for similar goods or services.
Absolute grounds for refusal include deceptive marks (a logo showing oranges for apple juice), marks contrary to public policy (offensive language, swear words, or other inappropriate content), and marks with protected emblems (the Olympic rings). The Office reviews applications against these criteria.
How do I register a trademark in the UK?
You register a trademark in the UK through the IPO, which acts as the trademark office. The process takes about 4 months if there are no objections. You'll need to conduct a trademark search, select appropriate classes, and submit an application.
How do I conduct a trademark search?
You perform a trademark search using the UK IPO database. Access the database, enter search terms, and interpret results. This step saves time and money by identifying potential conflicts early. Search for identical and similar marks in relevant classes to assess the likelihood of confusion.
How do I select the right trademark classes?
The Nice Classification system categorises goods and services into 45 classes: 34 for goods and 11 for services. Choose classes that accurately cover your current offerings and potential future expansions.
For example, a coffee shop might select Class 30 for coffee and Class 43 for café services.
Be cautious of over-claiming. Selecting more than one class can lead to challenges or cancellation of the mark. An online clothing retailer might choose Class 25 for clothing and Class 35 for online retail services, rather than including unrelated classes.
What is the trademark application process and what are the fees?
You submit a trademark application with the UK IPO online or by post. Online applications cost less and are processed faster. Current fees are £170 for the first class and £50 for each additional class when applying online. Complete the application form, pay the fees, and submit your application.
It examines your application and publishes it for a two-month opposition period. If no objections arise, they usually register your mark within 4 months of the application date. Outcomes include acceptance, objections, or opposition from third parties.
Professional assistance from a trade mark attorney provides additional value for comprehensive searches. A trade mark attorney identifies less obvious conflicts and evaluates overall registrability. They detect phonetically similar marks or marks in related classes that you might overlook.
What are the risks of not trademarking my business name?
Operating without trade mark protection exposes your business to brand dilution, legal challenges, and loss of brand identity. Another business might use the same name, potentially confusing your customers and damaging your reputation.
A small bakery in Manchester experienced this issue when a larger chain with a similar name opened nearby, resulting in customer confusion and reduced sales.
Defending unregistered trade mark rights is challenging, as you must demonstrate goodwill and reputation. You might face expensive rebranding if required to change your business name due to conflicts.
How do I protect my trademark online?
Register relevant domain names, secure social media handles, and set up Google Alerts for your trade mark. These strategies safeguard your brand on the internet. Domain registration prevents others from using your trade mark in web addresses. Social media handles maintain your brand's consistency across platforms. Google Alerts inform you of potential online infringements.
Include the ® symbol next to your registered trade mark on websites and digital materials. Establish a clear usage policy for your trade mark and apply it consistently.
For example: 'Our trade mark must appear in bold, capitalised letters and cannot be altered or combined with other words.'
What should I do if someone infringes on my trademark?
If you discover potential trade mark infringement, gather evidence, send a cease and desist letter, consider mediation, and pursue legal action if needed.
The cease and desist letter should clearly outline the infringement and request that they stop using your mark. Include details of your trade mark, how it's being infringed, and a deadline for compliance.
If the initial approach is unsuccessful, seek legal advice from specialist solicitors who specialise in intellectual property law. You can file a claim for trade mark infringement in the Intellectual Property Enterprise Court or the High Court.
Legal proceedings can result in an injunction, damages, or an account of profits. These outcomes stop the infringement, compensate you for losses, or require the infringer to pay you their profits from using your mark.
Frequently asked questions
How long does trademark protection last?
A UK trade mark, as a registered trade mark, lasts, and this trade mark lasts for 10 years initially. You can extend it indefinitely for further 10-year periods. The UK Intellectual Property Office (UK IPO) needs payment of renewal fees and continued use of the mark for this protection to continue.
Can I trademark my logo as well as my business name?
Yes, you can trademark logos separately from or in addition to business names. A logo mark, as a logo mark, can be registered to give complete brand protection. This dual registration protects your visual identity and verbal branding, stopping competitors from using similar logos or names.
What if someone is already using my business name but hasn't registered it?
If someone has been using a similar name before you, they may have rights even without registration - this is 'prior use' in trademark law. You should get legal advice if you find yourself in this situation. A trademark attorney can help you assess the strength of your claim and look into options like co-existence agreements or alternative branding strategies.
Can I register my trademark internationally?
Yes, you can register your trademark internationally. The Madrid System gives a simplified process for international registration. You file a single application through the UK IPO, designating the countries where you want protection. This method reduces time and money compared to filing separate applications in each country.
How much does it cost to hire a trademark attorney?
Trademark attorney fees in the UK typically vary from £500 to £2,000 for a standard application. This cost usually includes initial searches, application filing, and responses to examiner's reports. Professional assistance can save money long-term by avoiding application errors or conflicts that might cause costly disputes or rebranding exercises.