• Intellectual property
  • January 28, 2022

How to trade mark a logo for your business

article
Registered trade marks can be applied for in respect of words, logos, sounds, smells and colors, for example. Many small business owners mistakenly believe that a logo trade mark will provide them with adequate protection for the name of their business. This is not always the case as, in theory, the representation filed with a trade mark registry defines the scope of protection. Filing a highly distinctive graphical representation of a particular word may not protect the word itself. On the other hand, logo trade marks may be the only way of obtaining some trade mark protection for a highly descriptive name. For example, LONDON AIR CONDITIONING SERVICES would not be protectable via a registered trade mark in terms of the words. Representing the words in a distinct graphical format would however enable an applicant to obtain trade mark protection for the way in which they use the words. This can still be highly desirable to provide brand exclusivity.


How to trade mark a logo?

Applying for a logo trade mark is not that dissimilar to applying for any other type of trade mark. There are some specific considerations including:

  • Should you file in color or black/white, or both?
  • Do you need to disclaim any elements of the logo?
  • Is the logo going to be limited to any combination of colors?
  • Are there any words that are an integral part of the logo?

UK trade mark applications can be filed by using the following link - https://www.gov.uk/how-to-register-a-trade-mark. We do recommend that you engage a qualified trade mark solicitor to represent you.


Trade mark searching for logos

It is very difficult to search for trade marked logos using free to use tools. If the trade mark to be searched includes words it is much more straight forward. For a purely graphical logo it is advisable to commission an external specialist search. This can be costly however hence many trade mark applications will forego a search for logo trade marks prior to filing. You should discuss the options with your trademark solicitor before filing your application.



How much does a trade mark cost?

The UK Intellectual Property Office fee is £170 for filing a trade mark in 1 class and an additional £50 for filing in each extra class. There can also be other fees if, for example, you file a series application with more than 2 marks in the series, or the mark is a certification or collective mark. At LawBite, we can help you prepare, file and manage a UK trade mark application on your behalf. Visit our Trademark packages to find out more. 


Trademark v copyright

A logo can be protected by both trade marks and copyright. The logo would be considered a “work” under the Copyright Designs and Patents Act 1988. Copyright protection would arise automatically in the work and can be enforced against copiers irrespective of how the logo is used. Trade marks are more limiting in that a trade mark would only protect against use of the logo in connection with defined goods and services. A trade mark is however a monopoly right meaning that it is easier to enforce than copyright. Together, copyright and trade marks can provide a good balance of protection for your logo.


Trademark infringement

If your trade mark logo is used without your consent, this may be trade mark infringement. Trademarks protect a logo in connection with defined goods and services. Once you discover that your trade mark is being infringed, the first step is to understand the scope of the infringement before taking any further steps. Once you have all the facts, a cease-and-desist letter should be sent to the infringer. It is important to comply with the provisions of the Practice Direction on Pre-Action Conduct when sending any correspondence to an infringer. It is also important to keep your correspondence factual and on point. 

If the infringer does not agree to cease use of the mark and/or pay damages or an account of profits, you may have to consider issuing a legal claim against the infringer. The vast majority of cases are settled long before trial, but it is vital to consider your claim strategy before issuance of proceedings. Once proceedings are issued, you are potentially liable for costs if you later withdraw your claim without a settlement agreement in place.


How long does a trade mark last?

A trade mark remains in full force and effect for a period of 10 years from its filing date. A renewal fee would then need to be paid to keep the trade mark alive for a further period of 10 years.


How can our trademark lawyers help?

At LawBite, our trademark lawyers are well-versed in providing trademark legal advice for various industries in the UK, EU and US. Our trademark lawyers can help you quickly and cost-effectively to:

  • work out which trademarks you own or could own
  • provide legal advice on how to protect your brand assets
  • help you maximise the commercial potential of your trademarks
  • develop trade mark clearance and filing strategies
  • help you avoid infringing other people's trademarks

Our trademark infringement lawyers in the UK also deal with contentious issues, including:

  • investigating suspected infringement of trademark in the UK
  • advising on the tests for determining what amounts to infringement
  • helping you understand your options for defending a trade mark infringement claim

We are committed to helping you make the most of your brand assets, whether that be through offering advice on searching and filing or helping you resolve brand disputes.


Additional useful information


In closing

Nothing in this article constitutes legal advice on which you should rely. The article is provided for general information purposes only. Professional legal advice should always be sought before taking any action relating to or relying on the content of this article. Our Platform Terms of Use apply to this article.



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