Trade marks are owned by many types of businesses of all shapes and sizes – from micro-entities to multinationals. In this blog, we take a look at trade marks and just what they protect. We also discuss how much it costs to obtain a trade mark and how to register one.
Trade mark basics
A trade mark is a sign which helps a business distinguish its goods or services from those of other businesses. In essence, it helps a business to protect its brand. A trade mark can be a:
- Name, word or slogan
- Logo, symbol or font
- Colour or shape
- Sound or jingle
Trade marks are protected by intellectual property law. Registering one offers extra protection from competitors using the trade mark, but an unregistered trade mark also has some degree of protection.
Examples of trade marks include:
- iPhone (Apple product name)
- “I’m lovin’ it” (McDonald’s slogan)
- Google (brand name)
- Nike swoosh symbol
- Intel chime (jingle)
- Coca-Cola stylized font
A trade mark can also comprise a combination of different distinguishing features, such as a McDonald’s font combined with their slogan.
What is the difference between a registered and unregistered trade mark?
A registered trade mark gives its owner exclusive rights to use it when marketing their goods or services. Conversely, it prevents any other businesses from using the trade mark, unless the owner licences their rights.
According to section 10 of the Trade Marks Act 1994: “A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.”
A trade mark can be registered in the UK by applying to the Intellectual Property Office.
If a sign is used in the course of business to distinguish products, but it has not been registered, this is known as an unregistered trade mark. If a business has acquired goodwill that has become associated with an unregistered trade mark, a rival business that attempts to use the trade mark can be sued for “passing off”.
What are the benefits of registering a trademark?
Businesses which register a trademark are able to:
- Take legal action against any other businesses which use their brand without permission
- Add the registered trademark ® symbol next to their business name or brand
- Sell and license their brand to other businesses
How much does a registered trade mark cost?
A standard application for a registered trade mark costs £170 and £50 for each extra trademark class. There are 45 different trade mark classes, designated under a trade mark classification system that groups together similar goods or services.
There are alternative fees under the Right Start service, which charges £100 in advance to check if a trade mark application meets the rules for registration – plus £25 for each additional class.
A report is issued which explains if the application meets the rules. A further fee of £100 is payable within 28 days of receiving the report to proceed with the application – plus £25 for each additional class.
An additional £50 must be paid per trade mark if making a series application for three or more.
How can I register a trade mark?
Preliminary steps
Before registering a trade mark, it’s important to check that it can actually be registered. All of the following can be registered:
- Word
- Logo
- Shape
- Position
- Pattern
- Colour (single or combination)
- Sound
- Motion
- Multimedia
- Hologram
It’s vital that it is unique and not already registered. It cannot be offensive or contain swear words. If it is too common or merely descriptive, it will not be possible to register it; a trade mark must be distinctive.
Furthermore, it cannot be registered if it is misleading, too similar to state symbols, or is a three-dimensional shape.
Searching for existing trade marks
Since it’s vital that a trade mark is unique, a search of the trade mark database should be conducted prior to registration. The database can be searched in a number of ways, including by the: trade mark number; trade mark owner; or a keyword, phrase or image.
To discover any recent trade mark applications and amendments, it is also necessary to search the trade marks journal. This includes any applications or amendments which have been made in the last week in respect of UK or international trade marks.
The registration process
Businesses wishing to register a trade mark must apply to the Intellectual Property Office (IPO), in accordance with the Trade Marks Rules 2008. The IPO is the official UK government body responsible for trade marks, as well as other intellectual property rights.
Various information is required to make an application, including specific details of the trade mark, such as a comprehensive written description and any relevant graphics or sounds. Furthermore, the relevant trade mark class needs to be specified.
It is possible to register up to six multiple versions of a trade mark, known as a ‘series application’. It is vital that any trade marks in a series application are all similar in terms of their visuals or sounds, etc.
Post registration
Within 12 weeks of an application for a registered trade mark, feedback will be received. The applicant then has two months to resolve any problems.
Once an application has been approved, details are published in the trade marks journal for two months. In the absence of any objections, or once these have been resolved, the trade mark will then be officially registered. A certificate is issued to confirm trade mark registration.
A trade mark will last for 10 years once it has been successfully registered. After this period it can be renewed.
Should I register a company name along with a trade mark?
As discussed, many trade marks involve a business name. In fact, as is the case with McDonald’s, the name of the business is also a trade mark in itself. But businesses that have not been incorporated, such as sole traders, can struggle to prevent competitors from using a similar name. One solution to this problem is to register a company.
As part of a company registration process, a name must be chosen. This company name is unique and cannot be used by any other company.
Furthermore, there needs to be sufficient distinction between any two company names. There are two rules to this effect:
- ‘Same as’ company names – a company name cannot be registered if the only difference to an existing name is: certain punctuation; special characters; a word or character which is commonly used in company names; or a word or character which is similar in appearance or meaning to those from an existing name.
- ‘Too like’ company names – a company name may need to be changed if someone complains that a chosen name is too similar to an existing company name.
Since company names have more protection than other business names, registering a company can serve to fortify a trade mark that involves a business name, providing extra protection for the brand.
