Trade Mark Registration: Answers to the Top 21 Frequently Asked Questions
What is a trade mark?
Trade marks are distinctive signs that identify brands in relation to goods and/ or services. Your trade mark is the means for your customers to identify your business, and is often a brand name and may include a logo. They may consist of two- or three-dimensional elements such as letters, numbers, words, shapes, logos or pictures, or even sounds
What can be registered as a trade mark?
The vast majority of trade mark applications are for words, logos or a combination of both. Some logos do not have words, e.g. the Nike tick. Trade marks can be registered the UK, Europe-wide or internationally.
Registries are likely to refuse your trade mark if it is descriptive, generic in relation to the service provided, is offensive, or is misleading
Does registration at Companies House protect a trade mark from being copied by others?
Some people believe that a company registration protects a brand, however it does not. A trade mark registration protects both a brand and the company registration.
Although a business that is registered at Companies House has exclusive use of the registered business name, a person with a valid registered trade mark can insist that the company name is changed. Similarly a trade mark is not protected by the registration of a URL or domain name. In fact, it is trade mark registration that protects a company name, a url, or domain name.
Why is it important to register my trade marks?
No one NEEDS to register a trade mark, although you can save a great deal of money if you own a relevant registration in the places you trade. However, you will need a trade mark if you intend to license or franchise your brand in many countries. When selling on Amazon, it is highly beneficial to be registered with Amazon Brand Registry. Amazon Brand Registry requires a registered trade mark or similar information (see Trade Mark News for more information on this).
Trade marks help greatly in litigation and are essential in certain European countries. The best way to ensure that no one else can use your brand name, without your permission, is to register it as a trade mark.
If a third party were to use one of your trade marks – that was unregistered – it is possible for you to bring an action against the third party for ‘passing off‘. However you would need to be able to prove that:
- The trade mark or brand name is linked to your company’s reputation,
- Customers could confuse your trade mark with the third party’s, and
- Your business has been harmed as a result of this third party action.
This can be a very complex legal process, and ensuring that your trade marks are fully registered avoids this level of expense.
What is an EU trade mark?
An EU trade mark is valid in member states of the European Union. On registration, it gives the owner of that mark similar rights to those in the UK and in other member states. An EU trade mark is a cost-effective alternative to making individual applications in each of those European member states. Please note that an EU trade mark does not give trade mark rights in European countries and territories that are not member states of the European Union (such as Switzerland, Russia or Jersey).
When is the right time to apply for a trade mark?
At Trade Mark Associates, we work with companies of all sizes, and the answer to this question is always the same: as soon as you decide on a brand name. However, if you are planning to expand your business and to seek investment, or to sell your company, investors or prospective purchasers will expect your brand names to be registered as trade marks. Amazon expects its vendors to ensure that any trade marks used in the course of trading are registered in the appropriate countries (see below for more information on this).
It is vital that you do not delay registration because, if a third party registers your trading or brand name, you are likely to lose the right to register it yourself. As a result you may have wasted the investment you have already made in building reputation and goodwill in that name.
What is the process for a UK, EU or international trade mark registration?
All registrations must follow the same process whether registered by a small start-up, or a large PLC. The following is a brief summary of the process. This is explained in more detail here on our TMA Services page.
The first step is to conduct a trade mark search to check whether your trade mark or one that is very similar is being used, for similar products, by another business. Trade Mark Associates will undertake this search for you and will advise you as to whether your application has a good chance of successful registration, or whether you should consider changing your brand name.
The next step is to make the application in the territories in which you wish to use the trade mark: UK, EU or another part of the world. Trade Mark Associates will write a specification for you to review and submit it to the relevant registry. The registry will then examine the application. If they object, we will contact you with information about these objections and our advice as to the next steps. If the application is accepted by the registry, it proceeds to advertisement. This part of the process offers third parties the opportunity to object to your trade mark application. If no objections are filed, your trade mark is registered, and you will be issued with a certificate of registration.
Can I register a trade mark in countries outside the UK and EU?
Yes – there is no single trade mark registration that covers every country in the world. Our partner firm, Brand Protect, can help you obtain registration in non-UK / EU countries, in the most cost-effective manner.
Why is it important to undertake a trade mark search before starting the registration process?
We advise that, before making an application for a trade mark registration, a search of currently registered trade marks is carried out. The purpose of such a search is to check whether this trade mark, or one that could be confusingly similar, is already registered in the required classes.
At Trade Mark Associates, we can provide a report on the search, and this will include advice on whether an application could cause conflicts with currently registered trade marks. We can also advise on how, if possible, such objections may be overcome.
In addition, through our partner firm, Brand Protect we can carry out further searches in territories in other parts of the world.
What is Amazon Brand Registry?
Once enrolled on its system, the Amazon Brand Registry offers a number of benefits for Amazon sellers. It grants the seller greater influence and control over their brand’s product listings on Amazon, allows the seller to find and report brand violations, and share information with Amazon to help it be proactive in preventing future violations. To enrol, the brand must be a registered trade mark. This can be a word mark, or an image based mark featuring the brand name. At Trade Mark Associates, we have assisted a number of Amazon sellers obtain trade mark registrations, so that they can enjoy the benefits of the Amazon Brand Registry.
What is the impact of Brexit?
Unfortunately the uncertainty which continues to surround Brexit, extends to trade marks. Until a deal is agreed between the UK and the EU, we cannot, with certainty, confirm what the impact of Brexit will be on trade mark rights.
Following the Brexit referendum, we have seen a growing trend in which brand owners apply for both UK and EU trade marks simultaneously. Prior to that referendum, filings for both jurisdictions were less commonplace.
In November 2018, the UK government advised that in the case of a “no deal” Brexit, it would mirror EU registrations into UK trade marks. Therefore, if you currently own no UK trade marks and five EU trade marks, on the leave date you will have five of each. However, we still don’t know whether or not the UK will leave with a “no deal” Brexit.
Given the continued uncertainty surrounding Brexit, applying for both EU and UK applications is considered to be a sensible approach for those who trade in the UK and EU.
How long does a trade mark registration last?
In the UK, EU and USA, a trade mark remains registered for a period of ten years from the date it was filed. It can be renewed for further periods of ten years and six months before its expiration date. This period may vary in other parts of the world. Therefore, providing that your trade mark is properly renewed, it could be protected indefinitely.
If Trade Mark Associates processes the registration of your trade mark, we will advise you in good time before the registration expires.
What affects the costs of registering a trade mark?
Firstly, costs depend on the number of classes in which you want to register your trade mark. In the case of UK applications, the UK government charges £170.00 for the application (and first class) and £50 for each subsequent class.
Secondly, as trade marks are – by their nature- territorial, the cost of registration depends on where you want to obtain protection. Trade Mark Associates offers a low cost fee structure for registering trade marks in the UK and the EU.
Further costs could be incurred if the Registry or a third party raises objections to the registration of your trade mark (see here for more info).
Can I use ® or TM?
Anyone can use TM to denote that a word, phrase or picture etc. is being used as a trade mark, whether the word, phrase or picture etc. is registered or not.
However, using the symbol ® tells the world that the brand or trade mark is registered. It is a criminal offence to indicate that a brand is registered, when it is not. Therefore, it is important to note that ® can only be used after the trade mark brand has been registered, and you have the certificate to prove this.
How long does it take to prepare an application for trade mark registration through Trade Mark Associates?
At Trade Mark Associates, we understand the urgency in ensuring trade marks are fully registered, and we can start the search process as soon as you instruct us. The next stage, that of making the application, can be started as soon as we receive the funds from you. Its worth noting that some registries can take six to nine months to register a trade mark, and this is provided that no objections are raised.
The UK trade mark registry seeks to publish applications made to it, within two to three months for “opposition purposes”. An application can be opposed for a period of up to three months from the date of publication, although most are registered after two months. Therefore, at best the UK application process lasts four months, but could take longer.
An EU trade mark application is subject to similar scrutiny but the trade mark office takes, on average, 6-8 months to register from the date of application. Elsewhere (i.e. non-UK, non-EU), the time-scale varies depending on the country. At Trade Mark Associates we can advise you further on this.
Who owns the trade mark on registration?
Theoretically, any person or company can apply to register a trade mark. A trade mark registration can be owned by a third party (whether it is a “holding company” or a person), and licensed to the trading company to use.
The trade mark’s intellectual property rights are owned by the entity registering the trade mark. As a result:
- If a trade mark is registered under a business name, it can become a valuable business asset which could be licensed or assigned to other entities and third parties;
- If a trade mark is registered by an individual, the IP rights remain with this individual and cannot be seized as part of the company’s assets; and
- Trade mark ownership can be transferred at any time.
Can I register my logo as a trade mark?
Many trading entities use a logo as part of their brand. If you trade in this manner, then it is wise to register the logo as well as the words. A logo usually makes your brand stand out from the crowd and for that reason is often copied or imitated by competitors. Should your competitors use your logo in this way, it is easier and cheaper to pursue them on the grounds of trade mark infringement, rather than relying on unregistered trade mark rights (which is the law of ‘passing off’ and can incur significant legal costs). See Brand Protect’s website for more information about passing off law.
Can I apply for a trade mark if someone else has already registered a similar mark?
Although registration of a trade mark can be challenged, by a prior rights owner, it is possible to register two similar names if those names are classified to different trade mark classes.
However, it is risky to use a trade mark that is similar to an earlier trade mark, without the consent of the earlier rights owner. This is because you may be forced to cease trading and have to pay legal costs and damages to the earlier rights owner, should they sue you for trade mark infringement.
What are trade mark classes, and why do they affect the application and registration costs?
A trade mark class clusters goods and services that are deemed to be within similar areas of trade. The cost of trade mark registration increases as the number of classes to which the mark is applied, increases.
There are 45 such classes (in almost all world wide territories). At Trade Mark Associates, we can advise you on the proper classification of your trademark.
Unless a trade mark is registered in the correct classes, its protection against unapproved use by third parties could be compromised. At Trade Mark Associates, we have noticed that DIY applicants can be confused by the nuances of the various classes, when making a preliminary search of trademarks. As a result they often register in the wrong classes and in doing so are in danger of failing to obtain the protection that they need. Therefore, at Trade Mark Associates, we work very closely with the applicant to ensure that the classes selected are appropriate.
What information is required for a trade mark application?
At Trade Mark Associates, we will need the following information in order to start the search in preparation for an application for trademark registration:
- The brand name or trade mark that you wish to register
- The name and address of the applicant / trade mark owner (usually an individual person or a legal entity)
- The categories of goods and services which the trade mark serves (so that we can advise on the classes to be used)
- The country or countries in which you need the trade mark to be protected.
Call 01869 692 888 to start the process or to find out more.
Why use Trade Mark Associates?
The key reasons for using Trade Mark Associates is as follows:
- A qualified and experienced trade mark attorney will made the trade mark application on your behalf, and will advise you every step of the way. If court action is required, we have an experienced IP barrister available to advise you (see here).
- We do not have expensive city-based offices to maintain, and therefore can offer a very competitive pricing structure.
- Due to our expert advice, the vast majority of the trade mark applications we file proceed to full registration.
In addition, we are a friendly and approachable team, and look forward to helping you register your trademark, and finding solutions to any other IP problems you may have.
Are these 21 FAQs and answers useful for you?
If you have found this list of 21 FAQs about trade marks useful for your business, please consider forwarding the link to others whom you believe it also will help. That action will contribute fulfilling one of Trade Mark Associates’ objectives: to spread understanding about trade marks, how they are registered and the role they play in business growth.