Trade Mark Registration
Every business is looking for that competitive edge – something that differentiates their products and services from the crowd.
A trade mark, sometimes referred to as a ‘brand’, is an important tool that can give identity to and help customers recognise your products and services.
What is a trade mark?
A trade mark is something which identifies the goods or services of a particular trader to enable consumers to distinguish between competing goods and services.
Whilst a trade mark is most often words (in the form of a name or phrase) or an image, trade marks also cover distinctive sounds (such as the ‘intel inside’ jingle), shapes (the Coca-Cola bottle) or any combination of these elements.
Trade marks do not have to be registered, but if they are, they provide one of the strongest forms of protection for a brand.
Registration of a trade mark grants the owner exclusive use of such trade mark in the specific class(es) of goods or services which the mark is registered against. If anybody uses the trade mark without authorisation they can be prevented from continuing to use the mark regardless of whether the trade mark owner has suffered any loss or not, and if loss has been suffered they will be liable for such loss.
If you use a trade mark without registering it there is always the danger that your competitors could register the same or a similar mark which could cause you issues and force you to rebrand. It is also much more difficult to protect the goodwill in your brand with an unregistered trade mark as you have to rely on the common law offence of ‘passing off’ which places a much higher burden on you to prove that there is confusion in the eyes of consumers and that the other company is deriving benefit from your goodwill.
A registered trade mark is an asset of your business, and can be sold or licenced so that other people can use it in return for a fee.
Furthermore by having a registered trade mark, it allows the authorities to bring criminal charges against anyone using the mark in addition to your own civil remedies.
Registration lasts for 10 years, but can be renewed indefinitely provided that the trade mark is in use in the relevant class(es) of goods or services.
Registering a name at Companies House only protects you against another company being created with the same name; it doesn’t protect you against somebody using that name as a trading or product name
Just because you own the domain name, it does not give your trade mark any protection under the law; you will still need to register your trade mark if you want to protect your brand.
Where a third party has been using the same or a similar mark prior to your registration, but they have not registered their mark themselves, they may have acquired prior rights to the mark. In such circumstances they can oppose the registration or subsequently seek to invalidate the registration. The difficulty facing owners of such unregistered prior rights is that they must prove that they have acquired goodwill in the mark and that there is a prospect of confusion and damage to such goodwill by the use of your mark. If they are successful in establishing this then they maybe permitted to continue to use the trade mark in the same manner as prior to registration but are not automatically permitted to expand usage in restricted classes.
Bringing any such action is difficult, and is another reason why it is always a good idea to register your trade marks as soon as possible so as to remove the need to evidence prior rights in the mark.
Online and cost effective
Our intellectual property (IP) team has specialist expertise in trade mark registration. Having worked with many businesses on the legal issues surrounding branding and trade marks, the team has used that commercial experience to produce a cost effective, efficient online process for any business wanting to register a trade mark in the UK.
One-to-one with IP lawyer
Our system is simple to use but unlike most online services, provides the benefit of a one-to-one discussion and advice from a specialist IP lawyer.
Clear, fixed-cost pricing
With our fixed cost service, you’ll understand up front exactly what you are paying for.
Can a trade mark be altered or added to in the future?
No. Once a trade mark has been accepted for registration it cannot be altered except for the owner's name and address and the removal of goods and services, in the event of an objection.
Can anyone stop me registering my trade mark?
Anyone who has a registered trade mark, or uses an unregistered mark which is the same or similar to the mark you are applying for, can choose to issue an objection to your application.
Can I register a name without a logo as a trade mark?
Yes, you can register a name on its own (known as a ‘word mark’) or as part of a logo. Filing a word mark gives you wider and stronger rights than registering a logo and words combined, as it prevents your name being registered by someone else in future. Registering both separately gives you the maximum protection but this is seen as two separate applications, so two sets of costs and fees must be paid to the IPO.
How long is the trade mark registration process?
The procedure for obtaining a trade mark registration in the UK usually takes approximately 4 to 6 months depending on whether you have any opposition or objections.
I’ve got my brand protected by registering the name at Companies House and as a domain name (.com and .uk) so do I still need to register it as a trade mark?
Registering your brand as a company name or with variations of domain names is a great first step in protecting your brand, but it is not trade mark protection. It will not give you civil or criminal sanctions to use against someone using your mark and it does not give you any protection if you haven’t used your mark at all as yet or you’re a small start up business.
Once my trade mark is registered do I have the rights to that name anywhere?
Only in the course of business in the UK for the goods and services in which you have registered your mark. Outside of the UK, you must consider a similar process in that country or region. We can still help you with this if you might need this type of protection.
What happens if someone objects to my trade mark registration?
It is possible to seek to negotiate an agreed position with the objecting party, put your case to the IPO as to why the objection should not be upheld, or simply withdraw your application altogether.
Our fixed cost registration service
The cost for drafting your application and submitting it to the Intellectual Property Office (IPO) on your behalf is:
£500 (+ VAT) for up to 5 classes of goods or services.
Examination by the IPO
Once submitted, the IPO will examine and publish an application. The IPO charges:
£200 for one class of goods or services and for each additional class they will charge a further £50.
If your application is the subject of any objections or opposition proceedings, we will advise you on the options available to you in order to proceed – and any likely costs involved – should you wish to do so.
As part of the standard process, Napthens will undertake a ‘key word’ search of UK and EU registered trade marks. This search only covers identical word marks (but would not include for example, those that might be spelt differently, but sound the same).
If you are particularly concerned about this, we would be happy to undertake a search of trade marks with different spellings, together with a logo search. We would provide a quote for this additional service separately.