Trade Marks

5 most frequently asked questions about trade marks

We answer five key questions about trade marks.

Trade marks are a very important marketing tool and can be one of the most valuable assets a business owns. Here we present answers to 5 of the most frequently asked questions about trade marks.

1. What is a trade mark?

Trade marks are signs which help consumers to recognise a business’s products and services.  They act as a badge of origin, which lets consumers know who they are buying goods/services from.

A trade mark usually comprises words, letters, numerals, images, a logo or a combination of these.  In some circumstances, colours or colour combinations, the shape of goods or their packaging, sounds, smells and even holograms can be registered as a trade mark.

To be registrable, a trade mark must be distinctive and not be descriptive of the goods/services concerned. So, for example, the word BOOTS could be registered as a trade mark for toothpaste, but not for footwear.

2. Why is it important to register my trade mark?

Obtaining a trade mark registration is the best way to protect a trade mark.

If a competitor starts to use or applies to register an identical or similar trade mark to yours in relation to identical and/or similar goods, it will be much easier to stop them if you own a registered trade mark.

Similarly, having a registered trade mark right should prevent competitors trying to stop you using the mark for which you own the registered right.

Since details of registered trade marks are publicly available and searchable, this may help ‘warn off’ competitors from using or applying to register the same or a similar trade mark if they can see it is already owned by you.

Owning a registration also allows you to build reputation in the trade mark, which can in turn increase the level of protection owed to the mark. Many consumers will buy goods/services based on the strength of a brand alone and a trade mark can become the beacon by which consumers recognise the reputable characteristics of the products/services provided.

3. How do I find out if a trade mark is free to use and register?

A trade mark will normally be available for registration if there are no applications or registrations for identical or similar trade marks covering identical or similar goods/services already on the official Register of Trade Marks.  Wilson Gunn can carry out a search of the official Register of Trade Marks in the UK and provide advice on availability for registration.  We can also assist you in carrying out searching in overseas countries/territories.

Availability for use is largely determined by what trade marks third parties are already using or have used in the past in relation to the particular goods/services for which you want to use your mark.  This is important because even if a third party does not have a registered right in a trade mark, if they are using it, they may be able to rely on unregistered trade mark rights to stop you using the mark.

Use of a trade mark can be difficult to determine, but the more searching you do to find out whether anyone is using something identical or similar to the trade mark that you want to use, the better.  Searching can be done via Companies House (to check company names), domain names and the internet.

4. How long does it take to register a trade mark and how long will the registration last?

The registration of a UK trade mark generally takes around 3 months and an EU registration takes around 6 months.  Registrations can take much longer if objections or oppositions are encountered.

Obtaining protection in other countries/territories typically takes longer and the time varies widely from territory to territory.

Once obtained, trade mark registrations typically need to be renewed every 10 years.  This may be different in some countries/territories.

Resource: Click here to download our trade marks leaflet to learn more about the process of registering a trade mark

5. Where can I register my trade mark?

Trade marks can be registered globally, in just about every country/territory in the world.  You should consider registering your trade mark in each country/territory in which you market, sell and/or manufacture goods/services bearing your trade mark.

Wilson Gunn can assist you in registering your trade mark overseas and can advise on the best filing strategy to suit your business needs.

To discuss how we can help you to protect and manage your trade marks, please contact us to speak to one of our trade mark attorneys.

For further information about the process of registering a trade mark, click here to download our trade marks leaflet.

Wilson Gunn