When you have invested time, energy and money in building your business and establishing your brand, the last thing you want is other companies exploiting and profiting from your hard-earned work.
Trade marks give you the power to stop competitors from using similar branding and protect your reputation.
What are trade marks?
Trade marks are a form of Intellectual Property (IP). A trade mark is a sign that identifies and distinguishes your goods or services.
Trade marks can be:
- Words
- Logos
- Figurative marks
- Smells
- Colours
- Sounds
- Moving digital images
Registering a trade mark enables you to sell and license your brand, use the ® symbol, and take legal action against unlicensed use of your brand.
A trade mark must be distinctive for the goods and/or services provided, and you cannot register a sign as a trade mark if it consists of or contains an emblem that has protection under an International agreement.
A company name may not be able to qualify as a trade mark, and a registered trade mark does not automatically entitle you to use that mark as a domain name (the opposite is also true).
Choosing the right classes for your application
IP Offices worldwide use a trade mark classification system – known as the Nice classification – that groups together similar goods or services into 45 different classes.
Goods are grouped under classes one to 34, while services are included in classes 35 to 45.
Each class provides a general overview to explain what it covers. This is only a general indication and does not include all the goods or services in that class.
Your trade mark will only be protected for the goods and/or services you select, so it is essential to make sure you have chosen the correct class and terms when you apply.
You cannot add extra goods or services after you have applied.
Registering trade marks
You can register a trade mark either in the UK or throughout the European Union (EU) via an EU Trade mark, valid in all member states.
If you want to protect your trade mark in countries beyond the UK and EU, you will need to individually file a trade mark application with each.
Alternatively, to protect your trade mark in a larger range of countries, you can use WIPO’s Madrid System.
Through the Madrid System, you can file a single international trade mark application and pay one set of fees to apply for protection in up to 130 countries. You can also use the Madrid System to modify, renew, or expand your trade mark portfolio, although be aware – there are drawbacks to using the Madrid system that mean that in many cases you are better off making individual applications.
Trade marks registered with the UK Intellectual Property Office (UKIPO) or the EU Intellectual Property Office (EUIPO) are valid for 10 years and can be renewed indefinitely.
Take care to use your trade mark – a registered trade mark can be revoked if it is not used for five years.
Protecting your trade mark
If you find that a third party is using your trade mark, a cease-and-desist letter may be enough to make them stop. You can also make an agreement to license your trade mark.
However, mediation or legal action may be necessary to defend your IP if the other party persists in infringement.
Expert business and IP advice
At Mackrell.Solicitors, we have a wealth of experience in supporting owner-managed and family businesses.
We can help you register your trade mark and protect it from being infringed, including through counterfeit, passing off, or free-riding.
For further advice on such matters, please contact Harry Lancaster, Associate Solicitor, Commercial, IP & Psychoactive Medicines Team at harry.lancaster@mackrell.com or on 0203 972 6783.
Harry Lancaster