Protect your brand

Are you thinking about registering a trademark or looking for advice on conflicting marks?

What is a trademark?

A trademark is any sign that is capable of distinguishing goods or services.

A trademark may consist of words, designs, letters, numerals, shape of goods or packaging and colors.

Benefits of Trademark registration

One of the most effective ways you can protect your business name, brand and particular services is to register your trademark, it is part of your intellectual property. Our trademark specialists have been helping companies to register and monitor trademarks successfully for many years. There are major benefits to registering your trademark early.

Proof of ownership - avoidance of costly passing off actions

Anyone trading under a brand can rely on unregistered rights to it in much the same way they could rely on a registered trademark though these unregistered rights are typically much harder, and far more expensive, to enforce.

The owner of an unregistered trademark would have to bring an action against the third party and must demonstrate that:

  • they enjoy significant goodwill and/or reputation under the sign in question;
  • the third party has made a misrepresentation that is likely to deceive the public into believing that the goods or services it is offering are those of the applicant owner; and
  • The misrepresentation must damage, or be likely to cause damage to, the applicant’s goodwill and/or reputation.

There is a very high evidentiary standard for a Passing-Off claim and they can be very expensive and time consuming for the applicant as the burden of proof is placed solely on them. This in in contrast to the enforcement of a registered trademark where you just have to show that your registration pre-dates the use of the conflicting brand and that the conflicting brand is confusingly similar to the registered mark in terms of the mark itself and the good/services for which it is used.

Registered trademarks

As your service or product becomes established in the market, the trademark becomes more valuable with the goodwill associated with it. A company’s trademark and the associated goodwill can be compared to the historic cost of creating/building the trademark and the estimated cost to create an equivalent or replacement trademark.

As the owner of the mark you will have a statutory monopoly for use of the mark in relation to the goods or services for which it is registered therefore a well protected trademark can be sold, franchised or licenced.

Frequently Asked Questions

As soon as possible. If it is a new mark registration should be considered before the mark is used. A trade mark clearance search should be carried out, not only on the proposed trade mark but on the name as a company and any proposed domain names which might be considered. Domain names, like company names, cannot be reserved, rather a first come first served process exists.

Once this preliminary search has been carried out and given that the results are clear of any earlier registered or pending trade marks then the proposed mark can proceed to registration.

As soon as you file an application the filing date can be used as evidence that you are using the mark. If the application is successful the registration start date is back-dated to the filing date.

When a UK mark is registered it is published in a Register of Trade Marks held by The Trade Marks Registry at The UK Intellectual Property Office. A mark can be registered as a National Mark in the UK, a European Union Mark covering the whole of the EU or an International mark in many different countries either as a stand alone mark or using an original UK registration as a basis. EU Marks are held on a central register based in Alicante.

It is advisable to seek advice as to the registrability of a mark before making an application. It is not possible to register a mark that is directly descriptive of the goods or services that it seeks to protect, for example a picture of a clock for clock repairing services. It is also not possible to register marks that include National flags or other protected emblems, for example the Olympic rings. An application form must be filed attached to which must be a good quality copy of the mark. This copy will be used to reproduce the mark on to the Register. If the quality is not good enough camera-ready copy may be requested. The Registry will check to ensure that the proposed mark qualifies as a Trade Mark and that there are no conflicting earlier rights. The Registry will also check the proposed Classes and the specifications in each case. The Examiner at the Registry may challenge the Classes and specifications and require that amendments be made. Once through examination the mark will be published and a three month period will follow in which other companies or individuals on behalf of existing marks may make objection to the registration. Following the end of the publication period a successful mark will be registered and a certificate issued.

Applications in the UK now proceed on a similar basis to EU marks. On application for an EU Trade Mark earlier registered and pending marks are not cited on the Examination Report as a basis for refusal of a mark as marks are only examined on absolute grounds by the EU Intellectual Property Office. Absolute grounds means the examination of a mark in terms of whether or not the mark constitutes a trade mark, checking if it is distinctive, descriptive, or contrary to public policy (offensive etc.) The EU and the UK IPO do however, alert proprietors of registered and pending marks which are identical or similar to the proposed mark. It then falls upon the proprietors of those marks to make objection to the proposed marks during the three months following publication. To register in either the UK or the EU an extra fee is payable for each additional class beyond the first. The fees in respect of an EU Mark are greater than that for the UK.

The quickest UK registration can take about six months from application to registration. For EU marks you should allow at least 12 months, but the protection date starts at the application date.

For an application in the UK or EU we need to know the mark (with copies of any devices/logos), the specification of goods or services and the proprietor with written instructions to proceed. For international marks outside of the EU we need the name of the country in order to find out the most efficient method of registration which will be either by applying direct or through the World Intellectual Property Organisation.

Any newly registered trademark must be put to a genuine commercial use within five years of registration otherwise there is a danger that the owner could lose the mark upon an application being made by a third party for revocation.

If a trademark has been registered but has not been used for commercial purposes an application can be made to the UK IPO for revocation of the trademark.

Customer Says...