If you have a business, you have a trademark and if you’re serious about your brand, you should protect it with a registered trademark.
What is a trademark?
Your trademark is the symbol your customers use to identify and distinguish you from your competitors. Many of you will have quirky/original names for your business but have you considered brand protection? Every business needs to have a registered trademark which when registered will allow you and only you to use it!
What’s the difference between unregistered trademarks and registered trademarks?
Your trademark is your brand- maybe your company name, a name you registered at Companies House. Very similar names can be registered at Companies House and setting up a company does not give you a monopoly over that term.
You may be able to stop someone using a similar trademark to yours on their goods and services. This is known as passing off. However it’s harder to prove passing off than it is to defend a registered trademark and you’ll need to demonstrate the following:
- The mark is yours
- You’ve built up a reputation in the mark
- You’ve been harmed in some way by the other person’s use of the mark
This can be particularly difficult for start-ups of any nature as they may not have established a reputation and/or goodwill.
Registered Trademark Rights
You can register your trademark to protect your brand, for example the name of your product or service. So for example in the case of application software you could be protecting your name for the actual application you are selling or the service the application is offering.
If you are successful in your application a registered trademark will allow you to:
- Take legal action against anyone who uses your brand without your permission, including counterfeiters
- Put the ® symbol next to your brand – to show that it’s yours and warn others against using it
- Sell and license your brand
What Can’t I register as a trademark?
There are a number of reasons a trademark application may be refused (we will guide you through this) but here is a summary:
- be offensive, e.g. contain profanities or other offensive language
- Describe the goods or services it will relate to, e.g. the word ‘Mobile application’ can’t be a trademark for a mobile application!
- be misleading, e.g. use the word ‘100% cotton products for goods that don’t use 100% cotton.
- be a 3-dimensional shape associated with your trademark, e.g. use the shape of a phone for a phone!
- be too common and non-distinctive, e.g. be a simple statement like ‘we are the cheapest’look too similar to state symbols like flags or hallmarks.
What Can I register as a trademark?
Your trademark should be unique and it can include any of the following or a combination:
A made up word or a word we are not familiar with can be a great trademark to set you apart from your competitors- think Kodak! You can also use every day words such as Apple (it’s not descriptive of computer services!)
How do I know my trademark is available?
Before filing a trademark application it makes sense to check if it’s free to use. If you file a confusingly similar mark in similar goods and services you may be committing trademark infringement. You may have to withdraw your application, re brand and even face being sued for damages. You can search on the UKIPO website https://www.gov.uk/search-for-trademark or you can instruct is to carry out a trademark search and advice report. Whilst this does not eliminate any potential risks it does give us a good idea on how successful the application will be and what problems you might encounter.
How do I file an application?
If you are trading in the UK, we can file a UK trademark application on your behalf. We will need:
- The name of your brand (or a graphic representation if you have a logo or it’s represented in a stylised form)
- The name and address of the owner (this can be an individual or a company)
- A full list of goods and services i.e. what you do. Don’t worry about this aspect if you are unsure- we will fully draft the classes for you. This will be based on a discussion with your about your business so nothing is missed. You cannot add classes once it has been filed.
Your trademark is examined at the UKIPO and the examination report sent back to us in approximately 3 weeks. If successful it will be forwarded to a 2 month publication period whereby a third party can object. If no oppositions are raised your mark will be automatically registered and you will receive a certificate. The process takes between 3-6 months. A registered trademark lasts for 10 years.
If you wish to expand your brand overseas- just let us know, we can file anywhere in the world! Remember though that trademarks are territorial so a UK trademark will protect you in the UK only.
What if a third party is using my brand without my permission?
If you feel you brand is being used without your permission and you have tried to resolve the dispute yourself without success, it’s best to seek legal advice.
Each circumstance is unique but depending on a number of factors you may be able to stop a third party from using your name. If it’s not registered it may come down to who was using it first (this can still be a factor with registered trademarks). If the facts show you have a strong case a cease and desist letter may be sent detailing that the alleged infringer must stop and the consequences of failing to doing so.
If your brand is capable of functioning as a registered trademark then the benefits of filing are many. You have invested time and money into your brand and you should protect it. Don’t let others benefit from your hard work!