Business Legal Advice on Trademarks

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).

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.