A trademark is a type of intellectual property used to identify and protect your logo, name and brand from infringement. Your trademark could include words, shapes, logos, colours or even sounds and smells.
If your reputation in the market is positive, your trademark effectively becomes a symbol of trust. Registering a trademark gives you exclusive rights to use of the trademark and prevent others from riding on the back of your success. Should anyone use this trademark or one that is confusingly similar, you will be within your rights to take legal action to prevent damage to your reputation. Furthermore, in order to sell and license your brand, you must have a registered trademark.
The process for trademark registration starts with an initial search to make sure another entity hasn’t already registered an identical or similar trademark for the same categories of products or services you offer. From here, 360 Trademarks can take you through the process and ensure your application is filed under the right classes. Read more about the trademark application process here.
Intellectual Property Offices worldwide use a trademark classification system that categorises goods or services into 45 different classes. As part of the trademark application process, you must specify which category your goods or services fit into.
A trademark is registered to a specific class, meaning different businesses can register the same trademark in different classes. Once your trademark application has been filed, you won’t be able to add more classes or pre-approved terms, so it’s essential that you choose the correct classes for your goods and services. For more guidance on trademark classes, get in touch with our experts today.
Registering a UK Trademark provides protection in England, Wales, Scotland and Northern Ireland. EU trademark registration will require a separate application, but protects your rights in all member countries, making it a sensible choice for businesses who currently trade or plan to expand to Europe.
Before you can register your trademark in the UK, you must first check whether it qualifies as a trademark according to government guidelines. If it does, you are free to make an application for trademark registration to the UK Intellectual Property Office (UK IPO).
Your logo can be legally protected through trademark registration so long as it qualifies as a trademark under the government guidelines. That is to say, it must be unique; it must not be misleading; it must not be too common; it must not be offensive, and it must not contain existing symbols such as world flags.
Copyrights and trademarks both serve to protect intellectual property of a business or individual. A trademark is used to protect words or images that distinguish a particular brand from another such as commercial names, slogans and logos. A trademark is established through the use of a mark in a business and is issued on a “use it or lose it” basis.
A copyright, on the other hand, is generated automatically upon creation of original work and remains enforceable for its entire duration whether or not the owner keeps the work in circulation. Copyrights are typically used to protect the rights of professionals who produce literary, musical or artistic work, but also extends to other intellectual works like software code.
When it comes to trademark law and Google ads, the courts tend to measure cases against whether the consumer will be confused by a Google ad and likely to mistake one brand for another due to use of a particular keyword which is protected by trademark. In a landmark ruling from the CJEU in the Louis Vuitton case, the courts determined that a trademark is, in effect a ‘badge of origin’ – but as long as anyone using a trademarked term is not claiming origin, no infringement has occurred. For more advice on Trademark Law and AdWords, fill in our contact form in the footer of this page.
Registering a trademark is not a legal requirement, but doing so will grant you exclusive rights to your trademark and prevent others from using a name, logo or image that is distinctive to your brand.
Even if your domain name has been formally registered, it won’t automatically grant you exclusive rights to the name as a protected trademark. Since a trademark must satisfy the requirements set out by the Intellectual Property Office (IPO), it is not guaranteed that the domain name you have chosen will satisfy these conditions. What’s more, the name itself may already be a registered trademark. To prevent infringement, it’s recommended you register your name as a trademark with the IPO.
Simply put – no. Merely registering your business name under Companies House will not give you exclusive rights to use it and will therefore not prevent others from registering it as a trademark themselves. For your brand name to be protected, it must be registered under the Intellectual Property Office.
The UK trademark regime is predominantly governed by the Trade Marks Act 1994, and is largely harmonised the EU trade mark law. Section 1 of this Act defines a trademark as:
“Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.“
Anyone can apply to file a trademark – however, for that trademark to be successfully registered, it must be distinctive of the goods and services you provide. To be accepted by the IPO, your chosen trademark must not contain protected symbols or emblems or use profanities / offensive marks or language.
Yes – two businesses can use the same trademark, provided that they operate in different industries and have therefore registered their trademark under different classes.
Common words can be trademarked as long as the word itself is not descriptive of what the company does. This type of trademark is called an Arbitrary Mark, and a good example of this is Apple – the word is common, but not common for the industry in which the company operates.
Once your application has been sent to the IPO, an examiner will report on your application within 3 months. If successful, your details will be made public in the trademark journal. In the UK, a trademark application is automatically open to opposition for two months, although the opposition period can be extended by a further one month from the date of publication of the application on request by the potential opponent. If no oppositions are registered during this time, the IPO will issue your registration certificate. To ensure a successful application, it’s recommended that you seek professional advice to keep the process as smooth as possible.
As part of the trademark application process, the UK Registry will advertise your trademark for 3 weeks to allow for any third parties to oppose the registration.
If the Registry objects to your trademark, the decision will be based on absolute grounds, meaning that the Registry has taken issue with the suitability of the trademark in accordance to the legal criteria. If a third-party objects to your trademark, it will usually be because your trademark conflicts with their own trademark interests. In either case, it’s worth seeking out specialist advice from a trademark lawyer to determine the next steps in securing your trademark.
If your trademark is opposed, it may be worth contacting the party who filed the opposition as it will usually be possible to reach an amicable resolution, allowing you to use the trademark by adjusting your application.
If the trademark is opposed by the Registry, you can still use the name, logo or image – but you will not have the legal protection of an official trademark. Similarly, if the opposition comes from a third-party, you are free to still use the mark, but you risk infringement if the opposition was based on the grounds that your mark is confusingly similar to a registered trademark.
If the Registry objects to your trademark, you have 2 months to respond to the objection. Depending on the situation, you may be able to request a hearing if you think your application was dealt with unfairly or you disagree with their decision.
Since the formal opposition process can be long and costly for all parties, such complaints are usually settled through negotiations. If the objector does choose to pursue formal opposition to your trademark, both parties will be required to make their case to the Registry. While most cases can be settled through compromise, it’s worth acquiring professional advice from a specialist intellectual property lawyer if your trademark has been objected.
Yes, although the legal costs awarded will depend upon the stage of the trademark opposition. Depending on the outcome, costs can also be awarded to your opponent. Seek legal advice from a trademark lawyer for clarity on the viability of your case and representation through the process.
If you are already using a trademark, this could play in your favour during registration should there be conflicts on the trademark database. However, these rights are often costly to enforce and only tend to be successful when a considerable reputation has been grown for a long period of time under a particular trademark. The Registry will also need proof that conflicting marks have been registered to trick consumers and damage your business.
Registering your trademark in the UK will only give you exclusive rights to that trademark in the UK. Similarly, EU trademarks will only grant permission for exclusive use of the trademark in member countries. Trademark laws vary internationally, so if you intend to expand globally, it’s worth instructing a specialist trademark lawyer to help you protect your brand in each territory you intend to operate in.
As soon as you file an application for a trademark under the Registry, you are free to use the ‘TM’ symbol to signal to the market your intention to protect it.
You may have seen the ® symbol used on brand names or logos – this can be used as soon as your trademark has been successfully registered and your certificate issued by the Registry.
Once registered, you will gain exclusive rights to your trademark, meaning only you and authorised personnel will be able to use, license and sell your trademark. You will also obtain the right to take legal action against infringement of your trademark and gain the grounds upon which to oppose the registration of similar marks that could confuse the public and therefore damage your reputation.
If your trademark registration is successful, you will retain rights to it for 10 years. In the six months prior to expiry, you will be able to renew your trademark registration and for up to six months after.
Trademark registration is just the first step in protecting your intellectual property. We recommend signing up to our Trademark Watch Service to monitor whether any competitors are seeking to use your trademark or similar to gain an advantage. It’s also a good idea to have a specialist lawyer undertake a regular review of your business’ intellectual property protection strategy on a whole to ensure is isn’t open to unnecessary risk.
If you or your trademark lawyer discover unauthorised use of your trademark, immediate action is recommended to minimise any potential damage to your business’ reputation. Sending a cease and desist letter to the infringer is usually effective as a means of preventing further use of the trademark. If not, you can enforce your trademark rights with stronger legal action. Do not delay in seeking advice from 360 Trademarks as any time lapses between noting of the infringement and action could harm your case. Contact us on 0333 772 0926.
There are two means of opposing a proposed trademark. The first is to raise a third-party observation. This is a non-legal action advising the UKIPO they accepted the application in error. Since this is non-legal action, the UKIPO will not be bound to act on it. The second is to file a legal opposition to a trademark. This is a legal action that is taken to stop a published trademark from becoming formally registered.
Filing an opposition to prevent someone from registering a trademark is a complex process that requires professional support. Simply get in touch with the team at 360 Trademarks and we can help you file an opposition.
If your trademark opposition is successful, the business or individual will decide to withdraw its trademark application, or a compromise will be reached through negotiation which will determine how each party can use their trademark. In some cases, the Registry may decide to restrict the class of goods or services in which the registered trademark can be operated, or to limit its rights to a particular location.
Should you have any further questions about how to register your trademark or enforce your rights, do not hesitate to get in touch with us by calling our team on 0333 772 0926 or using our contact form.
Copyright © 2022, 360 Business Law Limited. All rights reserved.