Do I need to register my company name or brand as a Registered Trademark in order to get proper protection?
Yes. In most countries trademark registration is the quickest and cheapest way to ensure legal exclusivity for the use of your name. Whilst you can get what are called “common law” rights just by using a brand name but this is not something you should rely on for the following reasons (i) it takes a long time to acquire the rights, often many, many years (ii) the scope of the legal rights you get in the trademark is usually unclear and (iii) it does not stop someone else using or registering your name ahead of you which creates an automatic legal and commercial issue that can be very expensive to resolve So yes, you should always register a business name as a registered trademark.
What is the point of getting a trademark registration
Trademark registration is the only way to get the exclusive right to use your name and to stop others from using it.
If you do not ‘lock in’ the value of your name by protecting it by way of trademark registration, you are effectively building up goodwill and reputation in a business or product name that you could lose overnight if someone else seizes the opportunity to register your name. Such ‘name hijacks’ are extremely common and can be disastrous for the business concerned. It is a very easy problem to avoid by early trademark registration.
Also, until you have obtained a trademark registration, you have no certainty that the names and brands you are using are actually legally available. If someone else is already using the name you could be guilty of trademark infringement and, again, the legal consequences of this can be severe, including a court order to prevent you from carrying on your business, seizure of all stock, the payment of substantial legal damages and also heavy legal costs. Again, all very easy to avoid by getting a trademark registration.
If you do not register your brand names you are also open to attack from ex-employees, ex-business partners and other disaffected third parties (customers, suppliers, even relatives!) who see the opportunity of causing you a big legal problem by filing an application to register your own trademarks before you do so yourself. Then you may have to pay them a lot of money to get your own trademark back.
A registered trademark also allows you to take legal action against anyone who uses your trade mark without your permission and ultimately to stop them and oblige them to deliver up their stock to you and to pay you damages and your legal costs.
Getting a trademark registration also puts people off using your trademark without your permission, allows Trading Standards Officers or Police to bring criminal charges against counterfeiters if they use your trade mark, and is your property, which means you can sell it, or let other people have a licence that allows them to use it
I have already registered my brand name as a domain name. Do I need to register it as a trademark as well?
This is a very common question and the answer is that the domain name gives you virtually no rights at all in the brand. So yes, you definitely need to register your name as a trade mark even though you have registered the domain name. The domain name will not stop a competitor using your name as a trade mark unless you have protected it by way of trademark registration. In fact, if someone else registers your name as a trade mark before you do, they can sometimes stop you using your domain name and make you transfer it to them.
I have registered my name at Companies House. Do I need to register it as a trade mark as well?
The fact that you have registered your brand as a company name at Companies House will not stop a competitor using your name as a trade mark or trying to register your name as their own trade mark. All that the registration at Companies House does is stop some one registering another company with exactly the same name. If they change the name slightly they can register another company with an almost identical name. They can also use your brand name as their trade mark unless you have protected your brand by way of trademark registration. Companies House is only responsible for company registration and company law is completely different from trade mark law. You cannot stop someone using a trade mark, which is the same or similar to yours, just by registering your name with Companies House.
Will my Company Name be accepted as a Registered Trademark?
Just because your company name is registered at Companies House this does not mean it will qualify as a registered trademark. It may not be protectable by trademark registration because:
■It is not considered to be ‘distinctive’,
■It is a descriptive word or term
■It may indicate geographical origin,
■It may already be registered in someone else’s name.
If this is the case, you may want to consider changing your company name(a company can trade under many different brand names each of which can be protected by trademark registration) or adding a distinctive feature to your company name such as a logo or a graphic which could make it registrable as a trade mark.
What is a Trademark?
A trade mark is a business name, brand, logo or other ‘sign’ that distinguishes your goods and services from those of anyone else.
However, the name or brand must be what is referred to as ‘distinctive’. This means it must be sufficiently strong and different from any other brand so that it can be recognised as a brand that makes your goods or services distinctive and obviously different from those of your competitors.
What can I register as a trade mark?
Any available name can be registered as a trade mark for a product or for a service if it complies with the legal requirements. Slogans, strap-lines, buy-lines, logos, designs, even shapes, colours and smells can be registered as trade marks.
Is any name protectable as a registered trademark?
No. Not all names and brands can be protected by trademark registration. The Trade Marks legislation lays down very technical and specific criteria which the various Registries apply when deciding whether to accept any given name or brand for registration. Trademarks that are too descriptive or which are not capable of distinguishing your business from other similar businesses may not be accepted. Geographical names are also difficult to register.
Can I take action if my trademark is not registered?
If you don't register your trade mark, you may still be able to take action if someone uses your mark without your permission, using the common law action of passing off but it is expensive and much more difficult than suing someone for infringing a registered trademark.
In order to be successful in an action for ‘passing off’ or infringement of a trademark and is not protected by trademark registration the law puts a heavy burden of proof on you. You have to be able to demonstrate to a court that you own the trademark exclusively (ie no-one else is trading under the same mark), that you have a significant reputation in the trademark (it is not enough to say that you have; it has to be proven) and, finally, your have to show that you have suffered financial loss as a result of the other person’s use of the mark. Again, this is often very difficult to prove.
However, once you have a trademark registration, it is much easier to take legal action against infringement of your mark without having to rely on passing off.
What trademarks cannot be protected by Trademark Registration?
Names and brands are not able to be protected by trademark registration if they:
■are descriptive of the goods or services to which they relate or any characteristics of those goods and services (eg Savoury Crisps, Holidays International or Juicy Fruits are highly unlikely to be accepted for trademark registration because they are descriptive)
■have become customary in your line of trade;
■are not distinctive;
■are three dimensional shapes, if the shape is typical of the goods you are interested;
■are specially protected emblems like national flags and coats-of-arms
■are offensive;
■are against the law, for example, promoting illegal drugs; or;
■are deceptive. A trademark must not mislead people to think that your goods and services have a quality which they do not have.
Obviously, if your name is already registered by someone else you will not be able to use or register it for the same kind of business.
Can I take action if my trademark is not registered?
If you don't register your trade mark, you may still be able to take action if someone uses your mark without your permission, using the common law action of passing off but it is expensive and much more difficult than suing someone for infringing a registered trademark.
In order to be successful in an action for ‘passing off’ or infringement of a trademark and is not protected by trademark registration the law puts a heavy burden of proof on you. You have to be able to demonstrate to a court that you own the trademark exclusively (ie no-one else is trading under the same mark), that you have a significant reputation in the trademark (it is not enough to say that you have; it has to be proven) and, finally, your have to show that you have suffered financial loss as a result of the other person’s use of the mark. Again, this is often very difficult to prove.
However, once you have a trademark registration, it is much easier to take legal action against infringement of your mark without having to rely on passing off.
In which countries do I need to register my trademark?
If you are carrying on a UK business, you should instruct us to secure your rights by trademark registration at the UK Intellectual Property Office (UKIPO) in the appropriate registration Classes (there are 45 separate Classes and you need to pick the right ones for your business) that correspond to your current business and any extension to that business that you envisage in the future.
However, many SME’s and even home-based or web-based UK businesses now opt for a Community Trade Mark (CTM) because it is relatively inexpensive to secure your name rights by trademark registration in all 26 Member States of the EU by filing one trademark application at the Community Trade Mark Office, otherwise known as OHIM. A trademark registration by way of a CTM application will usually confer each Member State of the European Union. This obviously adds to the value of your brand and to your business as a whole, particularly if you ever come to sell the business or seek investment or joint venture partners.
What is a CTM or Community Trade Mark?
This is an EU trademark registration that that covers all 26 Member States of the EU by filing one trademark application at the Community Trade Mark Office, otherwise known as OHIM. A trademark registration by way of a CTM application will usually confer each Member State of the European Union. This obviously adds to the value of your brand and to your business as a whole, particularly if you ever come to sell the business or seek investment or joint venture partners
What is a Madrid Application or a Madrid Protocol Application?
A Madrid Protocol Application is an international trademark application that triggers applications in the countries of your choice by filing a single application either in London or at the European Trade Mark Office. Since October 2004, it is has been possible to include up to 172 countries by in your trademark registration program by filing one application. Under the Madrid Protocol it is now relatively inexpensive for small and medium-sized businesses to obtain a broad global ownership of their trade marks that was previously only available to large multi-nationals. The basic rule is that you should always look to protect your name by trademark registration in your main international markets. Otherwise, you can have competitors registering your name in those unprotected markets which effectively stops you selling in those countries under you own brand.
If I have obtained a trademark registration for one kind of product or service, can someone else get a trademark registration for a different kind of product or service?
Yes, in principle, they can. The same trademark can be distinctive of different products. So if Blacks Leisure have registered ‘Blacks’ for leisure retailing, this would not necessarily stop you from obtaining registration of the trademark ‘Blacks’ for a different product or service, say pet food or financial services. This is why, when we prepare you trademark application, we take great care to you should file in as many different Classes as possible to cover all the different products or services you currently provide or which you intend to provide in the future. The objective is to secure, by means of trademark registration, the widest possible scope of rights for your name or brand.
How long does a UK trademark registration last?
It lasts 10 years and can be renewed for further period of 10 years. If you do not pay your renewal fee by the next renewal date, your mark will expire. However, you are allowed an extra six months from the renewal date in which to renew your trademark registration, but you will have to pay a fee for late renewal. Following this six-month period, there is a further six-month period, i.e. a total of up to one year after the renewal date, in which you may apply to restore your mark.
How long will it take to get a UK trademark application through to final trademark registration?
About 4 to 9 months depending on various factors. Sometimes it can be longer if there are objections from the Registry or from third parties that need to be overcome. Importantly, protection will back-date to the date of your trademark application and anyone who has been using your name since that date will have been infringing your rights and may be liable to you in damages. So the earlier we can file an application for you the better.
Can I stop someone using my name as a domain name if I have already obtained a registered trademark?
You may well be able to stop them if they are trading in the same area of business and particularly if you can show that they are acting in bad faith. Otherwise you may have to go through one of the accredited domain name dispute resolution routes offered by Nominet and by WIPO.
Can I sell my registered trade mark?
Yes. A trade mark is legally described as "intellectual property". It is similar to other property you may own. It may become very valuable indeed and you can sell it if you want. We can advise you on the legal requirements.
Can I get a refund if my trademark application is turned down?
No. Our fee and the Registry fee covers the cost of the processing and examination of your application.
Can I sell my registered trade mark?
Yes. A trade mark is legally described as "intellectual property". It is similar to other property you may own. It may become very valuable indeed and you can sell it if you want. We can advise you on the legal requirements.
Am I breaking the law by using "TM" on my trade mark?
No, as this does not indicate that your trade mark is actually registered, only that it is being used in a trade mark sense. You would only be breaking the law (Section 95 of the Trade Marks Act 1994) if you used the registered symbol ® or the abbreviation "RTM" in circumstances where you had not actually obtained a trademark registration. It is basically a criminal offence to claim that you have registered rights in a trademark when you have not obtained a trademark registration.
When and how can I use the ® symbol?
You can use the ® symbol or the abbreviation "RTM" (for Registered Trade Mark) to show that your trade mark is registered but you do not have to do so. It is not mandatory. The ® symbol usually goes after the trade mark, in a smaller type size than the mark itself, and in a raised (superscript) position, but none of this is compulsory. If you do not have the ® symbol available, you can use the abbreviation "RTM". However, it is a criminal offence to claim that you have registered rights in a trademark when you have not yet obtained a trademark registration.
Once I have a trademark registration, can I extend it later by adding other goods or services if my business expands?
Unfortunately, not. You cannot extend an existing trademark registration but you can obviously file a further trademark application to cover the extra categories of goods or services. This however is not very cost-effective. It is for this reason that when we file an application for you, we recommend that you consider the likely future scope of your business as well, so that we can make sure your first application adequately covers such extra goods or services right from the outset. It is much more cost-effective to include as many Classes of goods and services as is feasible in the first application, as it only costs a small extra amount for each extra Class; whereas filing again later will cost you the full cost of another application. It is not possible to extend a trade mark registration to more goods or services after you have applied. A further application will be necessary to cover such extra goods or services.
What is included in the cost to register a trademark?
The fees you pay at the outset cover the Registry registration fees, the legal fees for preparing the specifications, drafting the application , filing the application in the right Classes, paying the application fees due on application, all advice given and correspondence entered into until this point and reasonable correspondence with the Registries and with you following the application in order to secure trademark registration. Not included is the cost of any trademark hearings that may be necessary to ensure that your trademark is accepted for registration, dealing with any third party correspondence or third party opposition, dealing with any Registry correspondence following application apart from basic amendments of specification, instruction overseas agents and dealing with overseas Registry actions.
Can you guarantee that my trademark registration will be successful?
We are successful in obtaining registered trademark rights in over 97% of our cases. Whilst our free availability and legal advice service is very successful in heading off potential legal problems, and whilst we can always advise of the likely registrability of any given trademark or brand, no-one can actually guarantee that it will be accepted for registration. There are many reasons for this. The Registries can be subjective in their application of the trademark registration rules. The preliminary searches do not always pick up every potential problem. Interpretation of the search results may involve subjective judgements that are not shared by the Registry. It is simply not possible to say conclusively that no-one else anywhere in the relevant territory is using your name(or a very similar name) and there is always the possibility of an opposition by a third party. It is not possible to foresee all of these problems. Nevertheless we are proud to say that we have almost a 100% success rate!
What are Certification Marks and Collective Marks?
A certification mark is a specific type of mark. In particular, it provides a guarantee that the goods or services bearing the mark meet a certain defined standard or possess a certain quality or characteristic. It is up to the owner of the trademark to define those standards or characteristics. Such trademarks are usually registered in the name of trade associations, government departments, technical institutes or similar bodies.A collective mark is a specific type of trade mark which indicates that the goods or services bearing the mark originate from members of a trade association, rather than just one trader.