Your company name is the verbal and aural identifier for your business. If a customer wants to recommend your goods or services, they will do so by referring to your company by name. Your company’s name is a key component of your brand tool kit and needs to be protected and defended to avoid dilution and damage to your goodwill and reputation.
What makes a good trademark?
At a basic level, a trademark cannot be descriptive, and it must be distinctive
. What does this mean? Consider a fictional company who have called themselves London Grass Cutting Services. A consumer reading this name would automatically know that the company provides grass cutting services in London. In other words, the name is inherently descriptive. On the one hand, this might be considered beneficial as consumers know what the company does without further research. On the other hand, the term has to be available for any other grass cutting company in London to use because of its descriptiveness. This means that the name is not capable of distinguishing the goods and services of one company from another, i.e., it is not distinctive.
The best trademarks
are either words that have nothing to do with the goods and services being sold under the trade mark, i.e., AMAZON, APPLE or VIRGIN, or words that are fanciful or made up, i.e., GOOGLE or YAHOO.
Suggestive marks may be registrable too, i.e., HOTEL CHOCOLAT, NETFLIX and AIRBUS.
How do I check if a name is already trademarked?
This should be the first thing you do once you have come up with a possible name for your company. If your chosen name has already been trademarked, you may be unable to secure registration of a trademark yourself
. Worse still, your use of the name may infringe somebody else’s trademark.
Searching for existing trademarks in the UK is relatively straight forwards. As a starting point, you can search by name, trademark number or owner through the UK Intellectual Property Office search tool
. However, it is not as simple as just searching for the exact name. You would also need to search for alternative spellings and variants. It is worthwhile asking your trademark solicitor
to run a conflict check on your behalf. A small investment can help provide peace of mind.
How do I register a trademark?
Firstly, you need to identify the classes of goods and services that your trademark should be registered in. Next, a description (in list format) needs to be prepared to cover all of the goods or services that are intended to go into each selected class. This needs to broad enough to cover all of the goods and services that are to be provided under the trademark but not so broad as to cover goods and services that you have no intention of every providing. The final step at this stage is to complete and submit the application form to the UK Intellectual Property Office
and pay the fee.
How much does it cost to trademark a name?
In the UK, the starting point is £170 for filing in one class and £50 for filing in each additional class. If you work with an Intellectual Property specialist
(which we would recommend) you will also need to pay the professional fees. At LawBite, we charge a clear and transparent fixed fee of £395 plus VAT
which covers the preparation, filing and management of the application process from submission to registration. The only time you would pay more is if your application is opposed (this happens in perhaps 1 in 10 applications). Of course, if you have done your searches, the risk of an opposition against your trademark application should be reduced somewhat.
How long does a trade mark application take?
In general, most UK trademark applications are examined by the UK Intellectual Property Office within 2-3 months of filings. Assuming that there are no formal objections (known as absolute grounds rejections), an application will publish shortly after examination. Once published there is a 2-month opposition period during which any interested third party with earlier rights in the word can file an opposition against registration. Assuming that no oppositions are filed against the application, you can expect it to register approximately 4-5 months after filing.
Can I protect my trade mark in other countries?
Absolutely! If you file applications in other countries within 6 months of the date of filing of the UK application (assuming that the UK application is the first filing for the trademark) you can claim priority from the UK trade mark application. What this means is that if anyone else files a similar trademark application in a country between the date of filing of the UK trade mark application and your later application in said country, you would have priority rights and would be able to block registration of the intervening trade mark application.
You can file trademark applications in any country at any time. Before you do, you should commission a local trademark search to provide comfort that no earlier rights exist in that country.
How long does my trade mark last for?
Trade marks are registered for an initial 10 year period that starts on the filing date. The trade mark can be renewed in successive 10 year periods and can be renewed indefinitely.
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