What is (and is not) a trade mark?
A trade mark can be a name, word, phrase, logo, symbol, design, image, sound, shape, signature or any combination of these elements. The vast majority of trade marks are words or images, or a combination of both.
You cannot register a trade mark if:
In order to register a trade mark it must have distinctive character so that it distinguishes your goods or services from those of your competitors. A trade mark lacks distinctive character if it is descriptive of the nature of goods or services that you supply. For example:
- “Fruit and Veg”
- “Pint of Beer”
- “Professional Carpet Cleaners”
- “Tasty Pastry”
- “Cheap Cleaning”
Place names can also cause potential issues where they are used to give an indication of geographic origin. For example:
- “Lincolnshire Sausages”
- “Worcester Sauce”
Although it should be noted that distinctive character can be acquired through actual use and therefore permit registration. For example:
- British Gas
- Yorkshire Tea
There can also be issues where phrases or words have become customary in an industry or sector and therefore lack distinction in themselves:
- “ … Direct” in the context of mail order retail
- “.com” in e-commerce or online publishing
A mark may also be rejected if it is deceptive or misleading. This is often linked to geographic origin so an application for “Somerset Nectar” may be rejected for an application for cider that is not brewed in Somerset (a region well known for the quality of its cider; or “SwissTek” for a brand of watches with no connection to Switzerland.
Certain names and emblems are protected against registration as a matter of public policy and these include:
- Armorial bearings
- Flags and other State emblems
- Official signs
- Abbreviations and names of international inter-governmental organisations
The examiner can reject an application on the grounds that a mark is offensive or promotes illegal activity.
If there is already a registered mark which is the same or similar to your proposed mark (whether audible, visual or conceptual in nature) the examiner may consider that the mark is not distinctive and refuse the application, and the other mark owner will have grounds to oppose the registration. For example:
- Audible similarities: “Goo Gull Search Engine” or “Armour Zone Books”
- Visual similarities would include circumstances where the wording on an existing mark is replaced with new wording in the same font and colours and using the same background or logo design
- Conceptual similarities would include depictions of the same stylised animal for a clothing range where an earlier applicant had already registered both a figurative logo and also the animal’s name in word form.
What type of trade mark should I register?
A UK Trade Mark protects your rights in England, Wales, Scotland and Northern Ireland and is therefore most suited to businesses trading solely within the UK.
A European Union Trade Mark (formerly known as a Community Trade Mark) protects your rights in all 28 member countries of the European Union. The big advantage is that the cost of the application is considerably cheaper than to submit multiple applications across Europe. If you are trading, or intend to trade outside of the EU, then we recommend that you register a European Union Trade Mark as this includes protection within the UK.
In each case, the range of the protection can be extended to jurisdictions outside of the EU to countries who signed up to the 1989 Madrid Protocol. This includes countries such as the USA, Russian Federation, China and Australia and covers most major trading countries. An application for extension can be made either upon the initial application, or at any time following registration, although priority is only granted for the first six months of registration. Please contact us if you would like to discuss extending the scope of the jurisdiction.
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.