A Trade Mark is a word, name, symbol or visual device which distinguishes your goods and services from those of someone else, such as a competitor product or service. A Trade Mark might be a word or a phrase, or an image (such as a logo), or a combination of both.
Trade Marks are often simplistically referred to as the ‘brand’. Many marketing people will tell you there’s much more to a brand than just that (i.e. tone of voice, personality etc.) Nevertheless, a strong, easily identifiable Trade Mark is an extremely powerful tool for customers to quickly recognise your products or services.
To receive a Trade Mark for your goods or service, and be able to use the ® symbol, you must have it accepted and registered at the UK Intellectual Property Office.
But hold on:
® or ™ ? What’s the difference?
Good question and worth asking. The ™ symbol doesn’t actually mean anything in UK law. It simply indicates that the user sees the mark as a Trade Mark, but it actually has no legal status whatsoever.
The ® symbol can only ever be used if the mark has been registered. Using the ® symbol on a Trade Mark that’s not registered is an offence.
Companies do use the ™ symbol when they could use their ® symbol, but designers prefer not to use the ® symbol purely for aesthetic reasons. Or so they tell us.
How will my Trade Mark be accepted?
Your Trade Mark will be accepted if it is truly distinctive for the goods and services you provide.
For example, the title of a book, a business name or a business slogan.
Your Trade Mark won’t be accepted or registered if it:
- Is not distinctive;
- Is a specially protected emblem;
- Is offensive or crude;
- Has become customary in your field of trade;
- Is against the law – promotes something illegal;
- Is descriptive – if it describes your goods or services or any characteristics of it (e.g. a Trade Mark which shows the value, quantity, quality, purpose or geographical origin of your goods or services);
- Is a three-dimensional shape – for example, if the shape has a function or adds value to the goods;
- Is deceptive – there should be nothing in the Trade Mark which would lead anyone to think that your goods or services are of a standard and quality you can’t deliver.
What is the registration process?
Before you apply for a Trade Mark you should check to see if it’s already been registered. You can do this directly from the UKIPO website by searching the Trade Mark database. It’s a free service.
If there are other marks on the register that:
- Look the same as (or similar to) yours, for the same (or similar) goods or services, or
- Sound the same as (or similar to) yours for the same (or similar) goods or services
then the UKIPO will inform you of them as part of the examination process.
At this point you might want to withdraw your application, or you may decide to allow the UKIPO to advertise your Trade Mark in the Trade Marks Journal.
This means the UKIPO will notify the owners of a previous earlier Trade Mark that your application has been received and advertised. Then as soon as your Trade Mark is advertised, your application is subject to a length of time in which a third party may oppose your application.
From this point on the application process has three distinct stages:
Stage 1 – Data capture
UKIPO logs the application and publishes the details on their website.
Stage 2 – Examination
UKIPO decides if your application is acceptable and searches for identical or similar Trade Marks.
Stage 3 – Publication
Once accepted, your application is published and open to someone opposing it for a period of time.
How long does registration take?
If the UKIPO examiner doesn’t raise any objections to your Trade Mark, and it isn’t opposed by any third party, it will normally take around four months for your Trade Mark to become registered. It may take longer if objections are raised or if your mark is opposed by anyone.
Once registered, your Trade Mark registration is valid for 10 years.
How much does it cost?
Application costs start from £170 (online) or £200 (for paper applications). This fee includes one class of goods or services, because when you apply for a Trade Mark you will be asked to provide a list of the goods or services on which you intend to use your Trade Mark. There are 45 classes in total; goods are in classes 1-34, services are in classes 35-45. For every other class you apply for it is an additional £50 per class each time. Here are some other things to bear in mind:
- The UKIPO Trade Mark database has not been designed as a comprehensive Trade Mark search facility and should not be used to determine conclusively whether a conflicting trade mark already exists;
- The UKIPO examiners will conduct a thorough search of all existing Trade Marks when they examine your application;
- Your application fee will not be refunded for any reason;
- You cannot alter your mark after you apply;
- If you should oppose any opposition to the registering of your Trade Mark, and you lose, you (the losing party) may be liable for costs;
- You must renew your registered Trade Mark every 10 years if you wish to keep it.
It’s probably a good idea to search the UKIPO Trade Mark database before you file your application. If you’re not sure what class or classes should be included in your application see the UKIPO classification guide of goods and services.
Intellectual Property Rights (IPR) are national legal rights and increasingly regional rights, such as the Community Trade Mark (CTM) in the European Union. The IPR given to you as the owner of your Trade Mark will be roughly the same in the national laws in the UK, other European countries and the USA. The detail will be somewhat different.
If you wish to protect your Trade Mark in other European countries you should consider applying for a CTM. For all other countries in the world you will need to check out the IPO equivalent in that particularly country.
If you need some help with a brand or Trade Mark issue, visit the UKIPO website, where you can also get confidential advice about your proposed application.
Remember, the only way to register your trade mark in the UK is to apply to the Intellectual Property Office.
It may also help meeting someone face-to face who has real expertise in this complex area. Rest assured, Intellectual Property Solicitors, Intellectual Property Lawyers and Trade Mark Attorneys are closely regulated. They will be able to look into your particular situation, find out what you’re trying to achieve and provide you with options, as well as offering you sound advice.
DISCLAIMER: This article should not be regarded as constituting legal advice in relation to particular circumstances. This article is merely a general comment on the relevant topic.