A trade mark enables a consumer to associate the mark with a particular business and distinguishes your brand from others. Well known trade marks include the McDonald's golden arches, Nike's famous tick and the Apple logo. A trade mark can be a word, logo, shape, sound (e.g. the MGM 'lion roar' used in the introduction to its films) and even a colour (e.g. Tiffany's famous light blue colour). This blog is the first of our mini-series covering each Intellectual Property Right in a little more detail and looking closer at the advantages of each. In this blog, we consider the main advantages of registering your trade mark and the process for doing so in the UK.
Why should you consider registering your trade mark?
Whilst it is not necessary to register a trade mark to gain trade mark protection under UK law, relying on an unregistered trade mark can make it more challenging for owners of a trade mark to prove that a third party is infringing their mark. If a trade mark has not been registered and you believe that a third party is copying or using a confusingly similar trade mark to your own, then you would need to rely on the common law of "passing off", in other words, a third party is misrepresenting your goods or services in order to pass them off as their own. A claim for passing off requires the pursuer to establish: (i) "reputation" in the trade mark (i.e. consumers must associate that trade mark with your business/ product); (ii) that you have associated "good will"in the trade mark, and (iii) the defendant's use of the trade mark has caused confusion to consumers. A successful claim of passing off therefore requires to meet all of these three components. The evidentiary requirements of proving these claims can be costly and time consuming.
Registering a trade mark can provide you with much stronger enforcement rights to stop a competitor from using your brand. A registered trade mark provides you with the legal presumption of ownership and gives you the exclusive right to use the mark in connection with the goods and services and within the classes that you register the trade mark within. If another business seeks to use/register a mark that is confusingly similar to a registered mark, the owner of the registered trade mark can object to the registration or raise proceedings against them for damages, this is usually more straightforward than a claim for passing off. Investors or potential buyers of your business will also seek to review your IP portfolio in the context of a proposed investment or sale and registered trade marks, rather than unregistered trade marks will likely be viewed more favourably, as they afford greater protection and demonstrate that you have taken steps to protect the IP within your business.
Trade mark registration also gives you the confidence that you are not likely to breach anyone else's trade mark, since a requirement of obtaining trade mark registration is that the same or similar trade mark is not already registered for a similar product.
Registration also allows you to add the ® symbol to your branding which will make it apparent that the trade mark is registered. This can act as a deterrent to third parties and make it less likely that a competitor will apply a similar mark to their products. Incorrect use of the ® symbol for marks which are not registered or which misrepresent the goods or services covered by the registration would constitute a criminal offence.
How to register a trade mark
To register a trade mark in the UK, an application must be made to the UK Intellectual Property Office (UKIPO). The UKIPO examines whether the application satisfies the statutory requirements. All registered trade marks are held on a public register allowing you to find out whether there are any similar trade marks already registered and identify the owner of any trade mark. IP specialists can offer comprehensive clearance searches which will identify potential pre-existing marks and can suggest modifications to improve your likelihood of a successful application.
To register a trade mark, the type of goods and services that the trade mark will apply to must be identified (e.g. Class 30 – coffee, tea, cocoa etc). There are 45 classes in total, 1-35 covering goods and 35-45 covering services. The UKIPO has produced a helpful toolto establish which classes you may wish to register your mark within. If you think that the trade mark will apply to a number of classes, you must register it in every applicable class (please note that the more classes applied for will increase the cost of registration).
Requirements of registration
The process of registering a trade mark takes around 4 months and a standard application costs approximately £200 and a further £50 for each additional class applied for. It is possible to submit a "Right Start" application to test whether your trade mark meets the necessary requirements at a cost of £100 with £25 payable for each additional class. A £100 fee (plus £25 for each additional class) will be payable if you decide to continue with trade mark registration. If you instruct an IP specialist to assist with the trade mark registration and/or clearance searches, their fees will also apply.
Once an online application is submitted to the UKIPO for review, and if not rejected for the reasons set out below, it is published in the trade marks journal. A period of two months then applies in which the trade mark can be open to challenge. If the application goes without successful challenge, the trade mark is registered and published in the Trade Mark Register.
Distinctiveness
To register a trade mark, it must be distinct. This means that it should be unique and must not be generic nor should it describe the quality or function of the product or service being offered i.e., "running shop". There are two types of distinctiveness: inherent and acquired distinctiveness.
- Inherent distinctiveness - this applies where the trade mark is inherently unique at the point of its inception. Invented words tend to fall under this category for example, Xerox or Google. These trade marks are immediately associated with those respective companies because of their uniqueness and tend to enjoy a high level of protection.
- Acquired distinctiveness - this is acquired over a period of time and achieved via successful marketing and branding. Acquired distinctiveness occurs when consumers begin to associate that trade mark with a particular brand. For example, Nike's swoosh logo may not have been inherently distinctive when it was first produced as a tick, but due to its brand reputation, over time it has acquired distinctiveness.
What you cannot register
Certain types of trade mark cannot be registered. These include where the trade mark is:
- offensive (e.g. include any swear words);
- misleading i.e., include the name "vegan" when the product contains meat in it;
- describes the goods or services it will relate to;
- is too common and/or non-distinctive; and
- includes a national flag or official emblem you do not have permission to use.
Trade mark registration is not just a legal formality, but a strategic step towards safeguarding your brand's identity and reputation. By securing exclusive rights to your trade mark, you protect your brand from potential infringement and gain valuable assets that can drive consumer trust.
At Brodies, we have extensive experience in assisting businesses to register their trade mark and build and protect their IP portfolio. If you would like to discuss trade mark registration with our IP experts, please get in touch with the contacts below or your usual Brodies contact.
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