Trade marks are at the heart of your business. The best way of protecting these valuable business assets is to obtain a trade mark registration.
Your trade mark informs the public that a particular product or service originates from your business rather than from your competitors. By doing so, it enables your business to build up valuable reputation and goodwill in its business name and brands.
The majority of trade mark applications filed are for words and logos. It is also possible to obtain registration for a mark consisting of colours, shapes, holograms, sound or audio files provided the mark will be perceived as a trade mark and can be sufficiently identified.
It is important that the mark you adopt as your brand or business name is capable of functioning as a trade mark and is not, for example, simply descriptive of goods or services or their characteristics. In such a case you may be unable to obtain registration, or to obtain registration you may have to provide substantial evidence of extended use over several years to show that the public does in fact perceive your mark as a trade mark.
It is important to remember that filing a company name or domain name is not the same as filing a trade mark application – it gives you no right to use a name or to stop others from doing so.
How do I find out if a mark is free for my use & registration?
Before adopting a mark you must use try to ensure that it is free for your use and registration or you may find that you are forced to stop use and re-brand as a result of objection from owners of earlier trade marks, or other unregistered rights.
Proper clearance searching should be carried out before use is commenced. Otherwise, time and money spent upon developing a business or brand identity, and production of goods, packaging, or other promotional material bearing the mark, will be wasted.
How do I register my trade mark?
The process of trade mark registration in the UK and EU is relatively straightforward & inexpensive. If the application is properly prepared to begin with, you can expect to obtain registration within 4 to 9 months from filing. The basic procedural steps are as follows:-
- The first step is to properly identify the mark which should be registered; the goods and services for which it is intended to use the mark; and full details of the Applicant. We are then in a position to file the application and to pay the official fee and any additional class fees.
- Once filed, the trade mark examiner will examine the application to ensure that it complies with all the formalities, that the mark is sufficiently identified and capable of functioning as a trade mark and is not descriptive in relation to goods or services applied for or otherwise objectionable.
- If the mark appears to be acceptable then prior to publication the examiner will conduct a search to identify earlier potentially conflicting trade marks so that you can consider whether to amend your application or take other steps in order to avoid opposition by owners of these earlier marks. At the same time owners of these earlier marks will be notified of publication of your application so that they may file opposition should they wish to do so.
- Following publication of your mark third parties have a period of 2 months (extendable by one month upon filing of a Notice of Threatened Opposition) in the UK, or 3 months in the EU, to oppose your trade mark application.
- If no one files opposition then your mark will proceed to registration and you will be presented with a registration certificate. At the end of the first 10 year period your registration will be renewable for successive periods of 10 years.
Why should I register my trade mark?
In the UK and EU (as well as many other jurisdictions) you stake your claim to a trade mark by filing a trade mark application and your rights date from the date of filing. In a ‘first-to-file’ jurisdiction, the paramount reason to file a trade mark application is to guard your business against a situation where it is forced to stop using its name or brand, or cannot expand into its natural markets or commercial sectors, because a third party has filed the same mark first and then objects to your continued use. Clearing and filing a trade mark at an early stage is your best defence against having to re-brand or face an action for trade mark infringement.
A trade mark registration offers the following benefits:
- a monopoly in the mark for the goods or services covered – so you can stop unauthorised use without having to show copying or malicious intent.
- the right to prevent an unauthorised use of a confusingly similar mark in the territory of registration without having to show copying or malicious intent.
- the right to prevent an unauthorised use of your mark for different goods or services where it trades upon or causes detriment to your trade mark’s reputation.
- visibility & deterrence – your mark appears on searchable databases and lets others know you have staked your claim and are serious about protecting your rights.
- evidence of the scope of your right so that the process of enforcing your rights is easier & less expensive.
- entitlement to use the ® symbol in the territory of registration.
- protection – while valid and in force your use of the mark for the goods & services covered cannot be stopped by a trade mark infringement action.
- potentially infinite duration – while you maintain it and make genuine use of it.
- ownership of a business asset which can be sold or licensed for royalties or used as collateral for business loans.
Where should I register my trade mark?
Trade marks rights are jurisdictional in nature so a UK Trade Mark Registration will not usually provide you with protection or with the right to stop a third party using or obtaining registration of the same mark in another market such as the US or China. Also, post-Brexit, an EU Trade Mark Registration no longer covers the UK.
You need to register your trade mark in those countries where you intend to trade either directly (for example, through your website) or indirectly through manufacture, distribution, or marketing of goods or services through locally based agents.
In the absence of registration, you may find that locally based third parties are free to appropriate your trade mark in that market by filing a trade mark application in their own name. You will then have lost control of your mark and may need to reach agreement with them upon their terms in order to trade in that market, or simply accept that the market in question is closed to you.
For a new business with limited resources obtaining the necessary trade mark coverage can be a daunting task but with the proper advice obtained at an early stage it is often possible to limit expenditure and reserve your rights.
The first step is to file a trade mark application in your home territory. For a UK national, company or partnership the home territory will be the UK so a UK Trade Mark Registration should be obtained.
The single market remains an important trading partner. An EU Trade Mark Registration is a unitary right which covers all EU member states. You can claim Paris Convention priority (i.e., the same date of filing) from your UK Trade Mark Application if you file an EU Trade Mark Application within 6 months of that filing. Until 1 September 2021 it is also possible to file a UK Trade Mark Application which claims priority (i.e., the same filing date) from an EU Trade Mark Application which was pending on 31 December 2020.
A UK ‘home’ filing can be used as the basis of an International Registration under the Madrid Protocol system to obtain trade mark registration in over 100 overseas markets, including important markets such as the EU, US, China, India, Brazil.
The Madrid Protocol is a flexible and relatively inexpensive system under which you can claim Paris Convention priority (i.e., the same date of filing) from your UK Trade Mark Application for overseas markets designated within 6 months of that UK filing. You can add other overseas markets at a later stage as they become relevant to your business. What you obtain is in essence a bundle of separate trade mark registrations – but since it is centrally administered (by WIPO) you have only one set of maintenance and renewal costs.
It is also possible to obtain trade mark coverage by means of separate national filings in jurisdictions of interest.
Do I have any protection if my trade mark is unregistered?
In the UK a measure of protection is available for business names, marks and get-up in which there exists a valuable business goodwill. In these cases the business owner can prevent unauthorised use of a mark which is calculated to damage that goodwill by means of a passing-off action before the UK courts. These rights can also be used to oppose UK registration of the offending mark.
An unregistered mark consisting of an original graphic or stylised word element might be entitled to protection to prevent copying if it attracts copyright or unregistered design right. These rights can also be used to oppose registration before the UKIPO.
The scope and protection of unregistered rights gives rise to complex questions of fact and law which require specialist advice. In many cases it is possible to improve the position by filing a trade mark application for an unregistered right.
If you need advice or assistance in relation to an unregistered trade mark matter contact us here.