Trademark Protection Legal Advice for Businesses

A trademark is 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 value to your business.

It will also make sure that other businesses cannot trade using your name or reputation.

These are some of the features that can be registered as Trademarks:

• Designs, letters and numbers
• Slogans
• The shape of a product or its packaging
• Sounds
• Smells
• Gestures

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In absence of opposition, or if any opposition is withdrawn or proved unsuccessful, the trademark is registered and you receive a certificate of registration.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!

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.

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!).

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.

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.

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.

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 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.

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.

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).

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!