19th March 2020
You have spent a considerable amount of time, effort and money thinking of a name for your business and creating your logo, and you would like to protect it from others using it without your permission. What can you do?
Joanna Convey, commercial solicitor with Myers and Co Solicitors of Burslem, Stoke-on-Trent, guides you through your options.
There are a number of advantages of registering a trade mark. These include:
Third parties who use your mark without permission can damage your brand, your reputation and your business. Registering a trade mark protects your brand and allows you to stop someone from using it (and similar marks) for identical and similar goods and services.
A trade mark is a valuable asset which can be used to extend your business, for example, by licensing it to others.
If you are thinking of adopting a new name or brand, it is worth carrying out a search of the trade mark register to discover if anyone has already registered the same (or a similar) name and provides similar or identical goods and/or services to you. If there is, the owner of the earlier mark could bring a claim against you to stop you from using it. As a result, you might consider choosing a different name or brand.
You can apply to register a trade mark even before it is used provided that there is an actual intention to use it.
You do not need to register a trade mark to use it; you can use an unregistered mark. However, if you do not register it, another business may be able to use it, or register it, and prevent you from using it later.
Under the Trade Marks Act 1994, a trade mark is any sign that is capable of being represented graphically, and is capable of distinguishing goods or services of one business from those of other businesses.
The mark must be distinctive and must not just describe the goods and services the business provides.
A UK trade mark is valid for 10 years. After this time, the protection can carry on forever provided that you pay the renewal fees.
You need to make sure that your mark is appropriately protected in the countries your business operates or intends to operate in.
If you only provide goods and services in the UK, a UK registration will protect you. If you operate in some or all of the European countries, you can extend your rights by applying for a European Union Trade Mark.
EU trade marks will continue to be enforceable in the UK until the end of the transition period, namely until 31 December 2020 (unless it is extended).
After that time, it is proposed that all EU trade mark owners will be granted equivalent trade mark rights in the UK, and there will be no need for an owner to pay any further fees or deal with any further registration procedure.
The Intellectual Property Office who deals with the applications to register a trade mark, groups similar goods or services into 45 different classes. The class(es) you need depends on which goods and services you provide or will provide under the trade mark.
The Intellectual Property Office fees for filing a UK trade mark application in one class is £170. Each additional class costs a further £50.
If you would like assistance with your trade mark application at any stage of your branding, please speak with Joanna Convey in the commercial law and intellectual property on 01782 525029. It is important to get your trade mark registration correct at the outset, as mistakes can be costly to put right.
This article is for general information only and does not constitute legal or professional advice. Please note that the law may have changed since this article was published.