Trade Marks

Our Partner Hugh Dunlop gives an explanation of trade marks and the application process: 

 

 

What is a trade mark?

 

A trade mark serves to distinguish your particular product or service from those of other commercial actors. 

 

It means consumers can identify the origin of the goods or services they are purchasing and establishes good will and reputation which can be extremely valuable. 

 

A trade mark can be one or more of a word, letters or numbers, a logo, a slogan, colours, a shape, an advertising jingle or any other sign that distinguishes your goods or services from those of others.

 

 

 

Is my company name a trade mark?

 

Your company name may be a trade mark but it is important to note that the ability to register a company name does not meant that you are entitled to use it as a trade mark. It may be confusingly similar or even identical to a trade mark that is already registered.

 

Both the UK and EU trade marks registries must be searched for visually and phonetically similar marks in the relevant classes. Searching registries is a matter of experience and should be undertaken by a professional. 

 

Registered and unregistered trade marks

 

Trade marks may be registered or unregistered.

 

The very use of a trade mark gives you rights in that mark but you should not rely on unregistered trade marks as it may be difficult to stop others copying your mark. Where possible you should always register your trade mark. 

 

Owning a registered trade mark has a number of advantages.

 

1. It can give you legal rights even before you use your mark.
2. It appears on a public register. This should help to steer your competitors towards marks that are different from yours.
3. It is much easier for you to stop others either inadvertently straying too close to your mark or deliberately copying your mark. This makes any legal action that proves to be necessary much cheaper. 

 

How do I register my mark?

 

In order to obtain a registered trade mark, it is necessary to file a trade mark application for the mark covering a particular country (e.g. UK or USA) or region (e.g. the European Union).

 

Your mark will usually be accepted for registration if it satisfies two main criteria.

 

First, it must not be descriptive of the goods or services of interest to you. If used incorrectly, the trade mark is liable to become a generic term which can affect the validity of your legal rights in the trade mark. Examples of this include, 'fibreglass', 'velcro' and 'jet ski'. 

 

Second, the mark must not be confusable with an earlier mark that is registered and/or used for the same or similar products. 

 

If your mark meets both of these conditions, it will usually be accepted for registration.

 

Trade marks after Brexit

 

Before 31 December 2020 it was possible for UK businesses to register their trade marks in the European Union register. This covered the whole of the European Union including the UK. As of 1 January 2021 this EU trade mark was split and now trade mark owners also need to have a comparable UK registration. Both EU and UK registrations must be renewed every 10 years. 

 

Can we help you?

 

While there is no requirement to have official legal representation for registering a trade mark, it is strongly recommended that you do seek legal advice for this process.

 

Our trade mark attorneys and lawyers offer legal support and advice to brand owners to develop, protect and exploit their brands on every level.

 

You can read more about our trade mark services here: Trade marks and brand protection