What is a trademark?
A trade mark is typically your company name.
The primary function of a trademark is to distinguish your products and/or services from those of another company, especially from those of competitors.
Your trade mark is the strategic tool to create brand loyalty and show the world that your products or services are unique and irreplaceable.
Why register a trademark?
If you want to have full automatic protection on your trademark, your sign must be registered. Once you have registered your sign, you have exclusive use of it and you have an automatic right to prohibit any other party from exploiting it without your consent. In fact, through the registration you can prevent:
other businesses from stealing your sign, or registering it before you for the same goods and/or services and getting away with it;
the use or registration of an identical or similar, potentially confusing trade mark for identical or similar goods and/or services.
The registration avoids wasting all the money and time you have invested to create and further your trade mark and protects it from misuse by other individuals or businesses.
It lasts 10 years and it can be renewed every 10 years. So, if you want to, you can legally protect your trade mark forever.
What if i don’t want to register a trade mark?
In the UK unregistered trade marks are still protected by law, but the protection is granted only if the trade mark has been used for specific period of time on the market and has established a reputation. In this case, the protection is uncertain and the only way to properly protect and enforce the trade mark is proving its use in court (which would inevitably be more expensive than just registering the trademark to begin with).
When can a name be registered as trademark?
In summary, a trademark can be registered when:
it is new, and it is not identical or similar to any of the trademarks already registered for direct and indirect competitors’ products and services;
it is unique. Marks with no distinctive character and which are not capable of being registered can include:
slogans, such as “Peace and Love” or “Best Price in Town”;
it isn’t a merely descriptive trade mark that just refers to nature, quality, quantity, features, graphical origin or use of the products and/or services (e.g. the words ‘The Big London Book Store’ would not be registrable for a large book shop in London) ;
it hasn’t been registered in bad faith just to anticipate, and then prevent, the registration of another identical or similar trade mark already used by another direct or indirect competitor;
it is contrary to public policy and/or morality,
eg: a trademark for the term ‘Fucking Hell’ was attempted to be registered in Germany for a beer brand, and was rejected on these grounds;
it doesn’t mislead the consumer about any feature of the products and/or services, such as the quality, or the geographical origin when relevant for the consumer (amongst others).
e.g.: “Woolly” for acrylic clothes, or “Parma” for English ham.
The UK application process - step by step
You submit your application to the UK Intellectual Property Office (UKIPO) via https://www.gov.uk/how-to-register-a-trade-mark.
The UKIPO reviews your application and determines whether or not your mark is capable of being registered as a valid trademark (see “what mark can be registered” for more information).
A representative of the UKIPO will then send you a letter (via email) helping you ensure that the application has been done correctly (e.g. appropriate classes and descriptions) and recommend or request any changes if needed.
Based on the UKIPO feedback, if any, you then need to login to your application on the UKIPO website and either provide a text response and/or make the necessary adjustments.
Once the application itself is finalised, the UKIPO searches for any pre-existing identical or similar trademarks which you could potentially infringe on with your proposed trademark. Following this, if the UKIPO finds a pre-existing identical trademark or a similar trademark to yours in your chosen class or classes, they send a notice to all the relevant pre-existing trademark owners notifying them of your registration and giving them an opportunity to oppose your registration.
If pre-existing trademark owners oppose, they need to pay £100 and go through a process and you will be notified – and then you can try and resolve it with them/negotiate an agreement or there is a possibility your application ends up being unsuccessful.
If no existing trademark owners oppose within 3 months, your trademark is registered.
This article was written by Legal Sidekick. Legal Sidekick is the legal platform for startups. We offer automated contracts and loads of startup legal resources and guides. For queries about trademarks, please contact us at firstname.lastname@example.org.