Every business uses brand names and logos to market their products and services to their customers or clients. From FTSE100 companies who have been trading for hundreds of years, to small/medium sized businesses and individual entrepreneurs, you will be using a brand or product name that consumers will recognise as designating your company as the trade origin. These signs are collectively known as trade marks and registering these marks could be the most important business action you take.
We have been working with Mike Tennant, Chartered Trade Mark Attorney at Newport based Tennant IP on a few projects and we asked him to provide his expert advice on this subject.
What Is a Trade Mark?
Your customers will understand that goods and services carrying your brand names or logos originate from you. Trade marks also carry your company’s reputation and goodwill. For example:
- Clothes bearing trade marks of a high-end fashion designer, like Ralph Lauren® will evoke the expectation of quality and luxury;
- On the contrary; trade marks of a budget supermarket, such as Aldi® will associate value for money in the mind of the consumer.
It doesn’t matter who your customers or clients are, the salient point is that these customers use trade marks as a symbol of trust, to protect themselves in their purchasing decisions. Trade marks protect both businesses and consumers.
It is important to note that rights to your trade marks are not automatic: you have to formally apply to register these marks to secure ownership. Registering your company at Companies House or owning a domain name with your trade mark in, gives you no legal rights to stop others using the same or similar name.
What Can Be Regarded As a Trade Mark?
Trade marks can take various forms, but most commonly are names, stylised words and logos, as these are the most recognisable elements for consumers.
Unusual types of marks can include shapes, patterns, colours, sounds, slogans, motions and holograms. The law states that if a consumer can understand that the sign can designate trade origin, then it can be allowable as a trade mark.
Exclusively descriptive or generic signs, such as “accountant” for accountancy firms or “food” for a restaurant, are not registerable, for these terms cannot identify the specific trade origin from competitors.
A trade mark must also be unique and cannot be registered if confusingly similar to an existing, registered trade mark. The reason for this is that confusingly similar marks cloud the function of a trade mark by making it harder for consumers to identify trade origin.
This is why it is so important to get your trade mark registrations in at the soonest possible opportunity, as you will have the prior rights over anyone who tries to file the same or similar mark after you.
When to Register Your Trade Mark?
Ideally, you should look to acquire the registered rights to your trade marks before the goods and services are publicly commercialised. This is because you give competitors no chance to be aware of your ideas and potentially disrupt your business by using the same or similar name.
However, using a mark without registration does not preclude you from seeking registered protection. There is no requirement for confidentiality before an application is filed (unlike patents, that deal with inventions).
Beware – The Costs of Not Registering Your Trade Mark
As your business grows and becomes more successful, your success acts as a signal for third parties to try and copy you in order to steal your profits and ride on your coat tails.
Using a trade mark without registering it can run the risk of competitors acquiring prior registered rights and can seriously disrupt your business activity.
If a competitor secures registered trade mark protection against an unregistered mark you are using, they can legally force you, in the worst circumstances, to:
- Immediately stop using the infringing trade mark and re-brand.
- Pay scale costs at the High Court of up to £500,000.00.
Re-branding can represent a major obstacle to the success of your business, in that the physical costs have to be met, including changing of stationery, marketing material, website material, product packaging, purchasing of new domain names and the PR cost of notifying of customers.
There is also a deeper cost, in that if you have been using an unregistered mark for a period of time and invested resources into the trade mark, the reputation and potential goodwill you have built up would be immediately lost. This naturally means that customers may question whether your re-branded goods and services have been affected in some shape or form and can lead to a serious loss of sales.
Registered trade mark rights gives you formal protection to stop competitors from disrupting your business and gives you the legal right to take action against them.
How Do I Register My Trade Marks?
Trade mark applications can be made at the national offices. UK businesses can (at the time of writing) acquire protection in the UK through either a UK national trade mark registration, through the UKIPO, or an EU trade mark registration, that protects the current 28 member states of the European Union, via the EUIPO.
Applications are a complex matter and some questions you may have will be:
- What trade marks should I register?
- Which goods and services should I register the mark for?
- Who should I designate as the proposed trade mark owner?
Obtaining the advice of a Chartered Trade Mark Attorney (CTMA) is the way to ensure that you get the right trade mark protection without mistakes. CTMA’s are professional, legal experts in the field of trade marks who can comprehensively assist you with obtaining registered trade mark rights.
Before an application is filed, we can conduct full trade mark searches to ensure that your chosen trade mark is available to be registered and to advise on any potential obstacles.
We also handle all applications and give you the specialist advice from pre-filing of an application to registration, including handling any negotiations with any opposing parties during the application process.
To Conclude – Final Thoughts
You may have invested resources into researching your market, brainstorming drafts or specific names and deciding on a final name and/or logos to represent your products or services – registering your trade marks is the only way to protect that investment and ensure that:
- You are legally allowed to use that name for your goods and services
- You can prevent competitors from using the same or confusingly similar name for their goods and services.
Your trade marks are the intangible assets of your business. Whilst you cannot touch them, they hold a substantial amount of your business’ value. Imagine if Google® had to change their name tomorrow, the loss in their company value would be substantial.
Obtaining trade mark rights is not an expensive activity, with costs for the most basic UK trade mark application being in the hundreds rather than thousands of Pounds. Protecting your trade marks via trade mark registration is a way to obtain the ‘deeds’ to your intellectual property, the consequence of not registering your trade marks far outweigh the cost of obtaining registration.
Tennant IP are a local, family-run practice of EU and UK Chartered Trade Mark Attorneys who can give you all of the specialist legal advice you need with respect to your trade mark rights. For any trade mark queries, please feel free to get in touch and we will be happy to assist you further.
Michael Tennant, Chartered Trade Mark Attorney
Tennant IP Limited
Email: mike@tennantip.co.uk
Telephone: 01633 258792
Website: www.tennantip.co.uk
