Getting started with a trade mark application can be overwhelming. Find out the basics, how trade marks work and how they can help you, in our FAQs.
A trade mark is a ‘sign’ (most typically a word or logo) that distinguishes your brand from those of your competitors. It can be used to prevent anyone else using the same or similar mark for similar goods and services in the territory in which you trade. If you plan to sell your goods and/or services under a brand name, then the simplest step you can take is to register that brand name as a trade mark.
Companies invest significantly in their brands and it becomes an integral element of their identity. Without legal protection (in the form of a registered trade mark), they have very limited ownership of that brand and will struggle to stop others ‘riding on their coat-tails’.
An example of this is a football club. The club will sell replica shirts, scarves and hats, as well as posters, lunch boxes, pens and even screensavers containing their mark, and not just here in the UK, but internationally to fans around the globe.
Much of the income for the club might come from the sale of branded goods. Counterfeit goods on which no royalty has been paid can make a serious dent in a business’s finances as well as damaging its reputation if the quality is not up to standard.
Trade mark protection provides you with the legal right to stop others from using the brand which you have invested in developing. Moreover, it is a company asset that can grow in value significantly. Coca Cola® is probably the best-known brand in the world and of its estimated value of $60 billion over 75% is associated with the brand alone. Little wonder that they take their trade marks very seriously.
If a company is precluded from using one of their core brand identifiers, or if somebody else attempts to use that brand for their own commercial activity, this can be extremely damaging to on-going sales. An example might be Toblerone®. Through its continued use of its triangular shape for chocolate and its various trade mark registrations it has the exclusive rights to produce triangular chocolate bars. Any competitor producing chocolate of a similar shape could be infringing Toblerone’s trade mark, and chocolate goods could, and have, been removed from the shelves and destroyed for such an infringement.
If your reputation for your goods and services is what makes the difference for you, then a trade mark is the best form of defence for your reputation. Don’t think that putting the letters ™ after your name is enough – they might well serve to deter some from misusing your brand, but the sign does not carry any legal weight in a courtroom fight.
Writing TM indicates to others that you consider the logo to be your trade mark, albeit that it is unregistered. Whilst in the UK unregistered trade marks are given some protection under common law, this is no substitute for registering a trade mark. Furthermore, there is little protection in most other EU countries for unregistered trade marks.
A trade mark will only provide protection for the goods/services listed in the application. For administrative purposes, goods and services have been classified into 45 classes and a full list is available on the ipo.gov.uk website
Unless you know for sure that a mark is not registered then you should seek professional advice from a trade mark attorney, who can conduct investigations and advise how to avoid any potential trade mark dispute. For example, if the mark is registered but is no longer needed by the third party, it may be possible to purchase the registration, or alternatively to apply to have it cancelled.
Probably; it depends on the goods or services for which the existing trade mark is registered. It is unlikely, for example, that car repairers would have a registered trade mark for goods and services which conflict with those provided by a clothing company. However, you should ask a trade mark attorney to conduct a search before an application is filed to register your trade mark; this should alert you to any potential difficulties.
Trade marks are not just branding tools, they are legal rights. This in itself suggests that the ‘easy route’ of filing independently should be avoided where possible. The UK Intellectual Property Office website will provide you with some guidance as to how to file and the types of goods/services included within each class. These are mere indications. There are thousands of terms that can be used to protect the relevant goods/services and the classes are not always obvious.
Only a legal representative who formulates these specifications on a daily basis will know how to protect your trade mark on the register and what to cover in order to ensure the broadest and most profitable protection By not seeking legal advice, you are taking the risk that you do not protect your commercial interests suitably from the outset, which could affect your business further down the line. Should you choose to protect your brand at a later date; there is a threat that someone else may have already filed a similar, if not identical, trade mark to yours already.
Even with legal representation, trade marks are affordable assets to obtain. They can provide protection for 10 years initially and this period can be renewed every 10 years. This is a legal asset that could serve you indefinitely. Why take such a risk at the imperative stages of a business and not seek legal representation?
The costs incurred in branding/rebranding, developing a logo, a website, promotional campaigns and so on, could all be completely wasted if you do not check whether that trade mark is free to adopt at the outset. If someone else uses or has registered the same or similar trade mark, they may have the legal right to stop you trading and you could therefore have to go through the entire re-branding process again.
Sign up to our mailing list to receive Mathys Matters, our monthly newsletter covering the latest IP news, industry insights, events and case law.
If you are interested in receiving quarterly newsletters relevant to our core sector groups - IT & engineering ('Inside Wires') and life sciences & chemistry ('Under the Microscope') - please select your preference(s) below:
Please select your practice area(s) of interest: