Whilst the law of trademarks can at times be a complex beast, this article is designed to answer some of the simpler questions we are frequently asked on this subject:
Question: What is a trademark?
Answer: In fact, many things can constitute trademarks. They are not simply reserved for business/trading names but also protect other branding elements such as visual logos, slogans, shapes, as well as less conventional elements like colours. Provided the mark is capable of indicating the source of origin of the goods/services and it does not fall under any of the grounds for refusal of registration (explained in more detail here) you have yourself a trademark.
Question: What’s the point of trademarks?
Answer: They essentially give the owner the right to prevent rival businesses from using the same trademark in that territory (or something confusingly similar to it) when trading in identical or similar goods or services. This helps to avoid brand dilution and prevent other people from ‘riding on your coattails’. Trademarks add huge value to a business and will be something investors, franchisees and purchasers look for as part of their due diligence.
Question: Do trademarks have to be registered?
Answer: Strictly speaking, no. It is possible to build up unregistered rights in signs used in commerce. However, registration of marks serves as important evidence of the owner’s exclusive rights and makes infringement much easier to prove. In short, those with registered trademarks have far greater legal protection than those without (and registering a business name is not the same thing as registering a trademark!).
Question: In what territories should I apply for trademark protection?
Answer: This depends on where you market and exploit the goods/services protected by your trademark(s). If the bulk of your customers are UK-based then the mark(s) should certainly be protected there. If a lot of your business is in other territories, then you may look to protect the marks in those jurisdictions as well or instead. Note that multiple trademark applications in multiple territories can get very expensive, so start-ups in particular often begin with UK protection and see how things go.
Question: How long do trademarks last?
Answer: 10 years, although in actual fact they can last forever since they can be renewed indefinitely (provided they are continually used). Considering the monopoly nature of the protection they give, this makes them an extremely valuable asset.
Question: What’s the difference between the superscript ® and ™ symbols?
Answer: The ® symbol designates a registered trademark and it is a criminal offence to use it if a mark is not registered. The ™ symbol, on the other hand, may be used to evidence rights in an unregistered mark.
Question: How can I tell if my trademark is too similar to another person’s mark?
Answer: The level of similarity will be assessed on a global basis, taking account of the aural, visual and conceptual similarity between the marks. A conflict search against existing registered marks should also be carried out before making a trademark application, to avoid accidental adoption of somebody else’s mark.
Question: What can I do if somebody is using my trademark?
Answer: This depends on whether the marks is registered or not. If it isn’t, you would have to rely on what is known as the common law action of ‘passing off’. This requires proof of reputation/goodwill, misrepresentation leading to confusion, and consequential damage. If the mark is registered, the claim would be trademark infringement and this is easier to establish. Often a firmly worded letter and subsequent negotiations suffice to reach an amicable resolution, without the need to resort to the courts.
Question: How long does it take to get trademark protection?
Answer: This depends on the territory. By way of example, UK and EU marks typically take around 4 and 6 months respectively from application to registration (provided there are no oppositions during the process).
Question: What is a trademark class and how many/which ones should I file/register for?
Answer: Any trademark application must include a list/statement of all goods and services in relation to which the trademark will be used. An internationally agreed system of 45 classes (known as the “Nice Classification”) has been created for this purpose, which groups together broadly similar categories of goods/services. So for example, class 9 covers apps, class 30 covers coffee and class 39 covers car rental. The number of classes applicants should protect depends entirely on the goods/services being offered under the mark. Specialist advice from a trademark practitioner should always be sought to ensure there isn’t a mismatch between the protection granted by the trademark and the reality of what is being offered under it.
Question: How much does it cost to get trademark protection?
Answer: Again, this is territory dependent. Please see our Trademark Protection Products for options and costs when it comes to protecting your brand. If you would like to discuss any of these in more detail, please get in touch and we would be happy to help!
To speak to the author of this article, Laura Symons, or for expert advice on any business legal matter please do enter an enquiry or call us today on: 020 38088314 and speak to a member of our friendly Client Care Team.
Laura Symons is an English qualified solicitor with experience working in both private practice and in-house. She has advised a wide range of businesses, with a particular focus on start-ups and the media and entertainment sector. Her work involved advising clients on a broad spectrum of commercial matters, as well as brand protection issues such as copyright, infringement disputes and trade mark registration and opposition.