Trademarks - what you need to know

Do you want to make sure that nobody else can use your trading name?

Do you want to protect the value of your business name and indentity?

How to Register Trademarks

Trademark protection is a complex area of law and vital that you seek trademark legal advice as early as possible in your journey. This not only helps to ensure that you have the right to register your marks, but also that you are registering them in the right way and in the appropriate territories.

How our Trademark lawyers can assist you

Seeking trademark advice from an expert trademark solicitor is usually the first step to understanding trademark protection within the context of your brand. The trademark solicitors at LawBite can help with all aspects of this process. At the pre-filing stage this includes advising which of your brand elements can be registered, whether your marks are already taken, which classes you should cover and carefully drafting a bespoke specification to reflect your business model. We then file the application(s) on your behalf and monitor and entire process through to registration, liaising with the trademark office as and when necessary.

The trademark advice we offer also extends to handling third party trademark infringement claims, whether this is defending your trademark in the context of opposition proceedings or pursuing somebody who is breaching your own rights. This includes expert business legal advice and recommendations about strategy and negotiations, as well as drafting pre-action correspondence and formal statements of case.

Trademark protection doesn’t need to break the bank. LawBite offers very competitive trademark legal advice and packages. Our trademark solicitors can recommend the most cost-effective way of achieving trademark registration and unlike most other firms, our fees are fixed regardless of the number of trademark classes you choose to protect.

What can you expect

Our lawyers can provide expert trademark legal advice and help you with all aspects of protection. They will:

  • Identify your potential trademarks and get them registered.
  • Check trademark registers to make sure that you are not infringing or are likely to infringe other peoples’ trademarks.
  • Show you how to commercialise the value of your trademark.

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Many businesses find traditional law cumbersome and complex, difficult to navigate and often full of hidden charges. Therefore, it is no surprise that SMEs instinctively turn to LawBite to solve their business legal problems, giving us a 98% service rating on feefo.
 
LawBite online lawyers and online solicitors provide expert legal advice on all commercial and business matters. Book a no commit 15-minute call with our friendly lawyers today or learn more by joining LawBite for free.

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Frequently asked questions

LawBite is the modern way for SMEs to get the high quality legal advice they need, but faster and cheaper.

As we look to revolutionise the traditional legal process, this may raise a number of questions on how we operate to provide your business with legal advice for your business that is; easier to access, clearer to understand and more affordable.

We have brought together the most frequently asked questions from our customers.

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. For example, class 9 covers apps, class 30 covers coffee and class 39 covers car rental.

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. It is possible to apply for EU-wide trademark applications at the EU Intellectual Property Office, as well as to expand trademark applications to international jurisdictions via WIPO’s Madrid Protocol system. 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.

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.

This depends on whether the mark is a registered mark 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 court.

Again, this is territory dependent. Please see our Trademark Protection Products for options and legal 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!

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.

The proper symbol to use depends on whether your mark is registered or unregistered. 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.

The level of similarity will be assessed on a global basis, taking account of the aural, visual and conceptual similarity between the marks. A thorough 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 and the risk of trademark infringement proceedings. Trademark lawyers are skilled in performing these and can also give an informed view on the likelihood of any risk posed by potentially confusingly similar marks, and suggestions as to how to mitigate the risk. These searches also illustrate why it is best to apply for trademarks before launching a brand, as it helps avoid the expense and reputational issues associated with costly rebranding if a mark is not clear to use.

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).

Sometime people assume that it is only words, brands, trade names, services names and product names and logos that are capable of trade mark protection. The reach of trade mark protection is actually far broader than this and can extend other less traditional trademarks. These are some of the features that can be registered as trademarks: 

• Designs, letters and numbers 
• Slogans 
• Symbols and images 
• The shape of a product or its packaging 
• Colours 
• Sounds 
• Smells 
• Gestures 
• Holograms 
• Multimedia marks 

Provided the representation of the mark is sufficiently clear, precise, self-contained, easily accessible, intelligible, durable and objective, in principle it can be the subject of an application.

The above doesn’t necessarily mean that anything that fits into those categories can be protected. Trademarks which fall into any of the following categories will not be registrable under trademark law: 

• Marks which are devoid of any distinctive character 
• Marks which describe any characteristic of the goods or services (e.g. their kind, quality, quantity, intended purpose, value or geographical origin) 
• Generic names such as marks which have become customary or generic in the relevant trade, e.g. cellotape 
• Marks which consist of shapes or another characteristic which result from the nature of the goods, are necessary to obtain a technical result, or which give substantial value to the goods
• Marks which are contrary to public policy or to accepted principles of morality (e.g. swear words), are deceptive, or which constitute specially protected emblems (e.g. the Royal arms)
• Marks involving applications made in bad faith (e.g. if the intention is to stop somebody else using the mark, rather than actually using it yourself)
• Marks in which a third party already has rights in the same field (e.g. an existing trademark)

Invented or arbitrary words, ideally which bear no relation to the product/service itself make the best trademarks. However, non-distinctive marks may still succeed if the mark has in fact acquired distinctive character as a result of the use made of it.

A trademark is a type of intellectual property, often a logo or name, that a business uses to differentiate its goods or services from those of all other businesses. It’s a badge of origin (or trade) that tells the consumer “this is my product”.

If you have a registered trademark it will add significant value to your intellectual property portfolio and thus to your business. It will also make sure that other businesses cannot trade using your name or reputation.

To register a trademark, you apply to the Intellectual Property Office, supplying details of your proposed mark at http://www.gov.uk/register-a-trademark.

You need to state the goods or services for which the mark is to be used. The registration applies only to the classes you request. The IPO uses the NICE Classification system, which separates goods into 34 categories and provides 11 classes of services to choose from.

After you file your application, the IPO examines it to check that the registration requirements have been met, including conducting a comparison of the mark with other registered marks. Within 20 days of receipt of the application, the IPO sends you a report giving a two-week period in which to address any issues raised in the report.

If the examiner is satisfied with the application in its current form or following any required amends, your application is published in the Trade Marks Journal, where everybody can read all about it for a further two months.

In absence of opposition, or if any opposition is withdrawn or proved unsuccessful, the trademark is registered and you receive a certificate of registration. The whole process can take only a few months from start to finish – voila!

They essentially give the trademark owner the right to prevent rival businesses from using the same trademark in that territory (or a confusingly similar mark) 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. By way of example, the trademark valuation of Google and Apple is said to be roughly $44.3 billion and $42.8 billion respectively. Not bad for an intangible asset!

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 trademark 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.

To register a trademark, you apply to the IPO, supplying details of your proposed mark at http://www.gov.uk/register-a-trademark. 

You need to state the goods or services for which the mark is to be used. The registration applies only to the classes your request. The IPO uses the NICE Classification system, which separates goods into 34 categories and provides 11 classes of services to choose from. After you file your application, the IPO examines it to check that the registration requirements have been met, including conducting a comparison of the mark with other registered marks. Within 20 days of receipt of the application, the IPO sends you a report of two months in which to address any issues raised in the report. 

If the examiner is satisfied with the application in its current form or following any required amends, your application is published in the Trade Marks Journal , where everybody can read all about it for a further two months. 

In absence of opposition, or if any opposition is withdrawn or proved unsuccessful, the trademark is registered and you receive a certificate of registration. The whole process can take only a few months from start to finish – voila!

How can LawBite help?

Our LawBriefs can provide expert guidance and reassurance, whether you are bringing or defending a legal claim, or resolving a dispute using Alternative Dispute Resolution (ADR) methods like Mediation and Arbitration.

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