A trade mark can be a word, phrase, or logo. The primary function of a trade mark is to act as the brand for your business. You must create a strong brand to enable you to build a strong reputation, allowing potential customers to recognize you as a legitimate business.
Building a reputable brand takes hard work and commitment. It is important you do not let this hard work go to waste by exposing your brand to third-party copycats who are looking to take advantage of your success. By registering your trade mark, you will have the power to prevent any third-party from infringing your trade mark. A trade mark registration is a cost-effective way to protect your brand and business.
Trademarkroom ® has over 20 years of experience regarding all types of Intellectual Property. The team, led by Director and Senior Solicitor Advocate Michael Coyle, are here to take you through the process one step at a time, using language you understand with costs you can afford. Our trade mark application fees are fixed and you will not receive any unexpected bills for fees you did not know existed.
We strive to offer a client-focused and business-friendly service.
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If you are operating a business and trying to grow while staying one step ahead of your competitors then you will certainly benefit from having a registered trade mark. This will help your goods or services stand out from the competition and will give them a unique identity. A registered trade mark will also protect you against competitors seeking to lure away customers by using similar branding to yours.
A registered trade mark gives you the exclusive right to use your mark for your goods or services. You will also be able to place the ® symbol next to it to prevent others from using your mark. Your competitors will not be able to take advantage of the ® symbol, as using it against anything other than a registered trade mark is a criminal offence.
It is entirely possible to use a trade mark which is unregistered, although enforcing your rights is much less straightforward and can be more expensive. Registering your trade mark will make it easier to take action against infringers.
It is a common misconception that trade marks are only for large businesses or for those who operate in certain markets. This is not true! No matter which market your business operates in or how big it is, a registered trade mark is essential for protecting your brand identity, for helping your business to stand out and adding value to what you do.
A trade mark is a valuable investment and is the best way to protect your brand. If you have a distinctive company name or you have recently purchased a domain name then it is essential that you also register a trade mark. In the event of a dispute arising, a registration at Companies House will not be offer much help.
A trade mark is a sign which is used to make your goods or services stand out. It may be a word, a logo or a combination of both. Perhaps most importantly, a trade mark must not be identical or similar to an existing one. A trade mark will be deemed similar if there is a real likelihood of confusion arising in relation to the existing trade mark and the proposed one.
In order to be capable of registration, a trade mark has to be distinctive. What is distinctive will depend on the goods or services for which the trade mark is intended for use, although the mark won’t simply describe the goods or services. A descriptive mark can include a variety of characteristics, such as quality, quantity, value, place of origin or the purpose for which the goods or services are used. A trade mark will also be deemed descriptive if it uses words which are commonly used in the industry the mark is intended for and, in any event, won’t help a brand to stand out from competitors.
A trade mark will also be refused registration if it is deemed to be offensive, if it promotes illegal activity or if it is deemed to be deceptive. This could include a wide variety of features and characteristics, although broadly speaking; a deceptive mark is one which would lead consumers to attribute something to the goods or services which they did not possess, such as a particular quality.
In addition to a restriction on being identical or similar to existing trade marks, a trade mark must also not be identical or similar to the flag or emblem of any country, armorial bearings (coats of arms), official signs or hallmarks or the names of any international inter-governmental organizations (such as the United Nations).
Trade marks can be registered solely in the UK, throughout the European Union, or internationally outside of the EU. The best place to register will depend on where your business operates and what your plans are for the future.
If your business operates in the UK and you have no plans to operate in Europe or further afield then a UK trade mark registration is the best option. It is worth noting that a UK trade mark does not protect the use of that mark in any other jurisdiction.
A trade mark spanning the European Union can also be applied for, which will offer protection across Europe. An EU trade mark allows for a single application to be filed and makes it significantly quicker, easier, and more affordable than applying to each country individually. The advantage of this is that it will prevent any business offering the same goods or services from registering an identical or similar mark and will give you the freedom to expand your business without the worry of unforeseen competitors benefitting from your hard work and investment.
If you are looking to operate outside of the EU then there are several options available to you. If you are only seeking to operate in a single jurisdiction, for example, the United States, then it may be worthwhile applying for registration solely within that country. Alternatively, you can apply to register your trade mark under the Madrid Protocol, which means it would apply across all of the countries that are signatories to the agreement. International applications require you to hold a UK application upon which your application will be based.
We are happy to discuss the results of your trade mark search with you for no extra charge
Once your application has been filed there may be queries from the relevant intellectual property office and we will deal with these on your behalf for no extra charge. Please note however that if an opposition is raised and you wish us to negotiate or fight the opposition on your behalf extra fees will be incurred. These fees will be fully transparent and known to you before any work is commenced.
Once your mark is registered we will act as your official agents. We will keep you informed of any notifications we receive of similar marks and discuss with you the best way to display your registered marks. We are happy to offer a discount for your next application made through us.
If we carry out a trade mark search and advice report and the results are negative you may feel that is the end of the process for you. You may be disappointed that your chosen brand is not registrable or is not available.
However, the positive way to view this is that the trade mark search has probably saved you a considerable amount of money as you have not applied for a ‘doomed’ trade mark.
If your heart is set on a particular mark that has risks attached then we may be able to improve its chances. We have worked on many cases that were initially rejected. We have submitted written observations to the relevant Intellectual Property Offices, resulting in the objections being overturned. Each case is viewed in its own right and we advise on an individual basis. Please note that if we do have to submit written observations after an application has been rejected extra fees will be incurred.
It may be that your original mark just needs ‘tweaking’. Often a simple adjustment to your mark is all it takes. For example, if I wanted to open an online sweetshop called ‘sweetshop online’, this is going to be rejected as it is descriptive of its services offered. If instead, I call it ‘JC’s Sweetshop Online’ it will probably be accepted as JC’s has given it the required distinctive element that is required by trade mark law.
We are happy to discuss this with you through our free aftercare trade mark report service. If you have multiple alternative suggestions that you want to try out let us know and we will offer you a discount.
Before we file a trade mark, we always recommend that our clients do a trade mark search.
We will provide you with a search report and letter of advice which will first consider if your proposed mark is suitable for registration and secondly, if any existing marks may conflict with your application.
If you do not search then you are applying for a trade mark ‘blind’ and significantly increase the risks of losing the filing fees.
We also offer searches in respect of international applications. Please contact us for a tailored quote if you are considering filing a trade mark outside of the EU.
As the trade mark examination process is subjective, the search will not guarantee the success of your proposed mark but it is essential to determine where you stand before making the financial commitment.
Once we have all the necessary information and funds, we aim to file applications within 24-48 hours.
After filing, the general duration of an application is as follows:
When a trade mark is registered, it is registered in relation to a number of classes of goods and services. These classes will indicate what goods and services are provided by the owner using this trade mark. A trade mark cannot be registered for all goods and all services therefore the classes indicated must be relevant to you and your business.
It is important that you include all the goods and services you wish to cover in order for your trade mark to completely protect your business.
Before filing an application, or completing a search, we will ask for a description of what goods and services you provide. This enables the team to determine which classes are best for your mark. Our trade mark classification service is all included in the search fee or the application fee. You will not receive a further bill for this service.
The TM symbol merely indicates that you view the mark as your trade mark and as such can be used on either an unregistered or a registered mark. This symbol has no legal standing and does not indicate that the mark is protected as a registered trade mark.
The ® symbol specifically indicates that the mark to which it is affixed is a registered trade mark. This means that the mark has passed through without problems and can now be used as a registered mark. You can affix the ® symbol next to your mark for the ten-year period. It is an offence to use it unless you are in receipt of the certificate for the trade mark.
All work carried out by the Trademarkroom is overseen by qualified or trainee Solicitors who also work at Lawdit Solicitors, a law firm regulated by the Law Society.
