5 most frequently asked questions about trade marks
We answer five key questions about trade marks.
Protecting your business name with a trade mark is something all businesses should consider. Trade marks are valuable assets that help customers to recognise a business’ products and services through your company name but also, for example, your logo, symbols or key phrases. Here we present five reasons why you should consider protecting your business name with a registered trade mark alongside other brand names your business might use, such as for specific products or services.
The primary benefit of a trade mark registration is to allow you to prevent third parties from using or registering an identical or similar trade mark for goods/services that are identical or similar to the goods/services protected under the registration.
While it is technically possible to take action without a registered trade mark via unregistered rights such as passing off, taking action on the basis of a registered trade mark is almost always cheaper, quicker and more likely to succeed.
In addition, unregistered rights typically take several years of continuous trade to become enforceable, whereas a registered trade mark is enforceable as soon as it is registered. This can be as soon as three months from filing, and before trading.
Once registered as a trade mark, the registration is publicly searchable. This provides the advantage of warding off third parties from using a similar mark on similar goods/services without you needing to take any action.
Finally, a registered trade mark can make it easier to prevent other companies from registering a conflicting company name or from using a conflicting domain name.
Once you have a registered trade mark in the UK, the UK Intellectual Property Office (UKIPO) will provide you with notifications of new trade mark applications that it deems to be similar to the registration so that you have the opportunity to oppose.
A registration can therefore help you to become aware of new businesses that may be moving into your field and using a similar name and action can then be taken at an early stage when it is typically cheaper and quicker, sometimes before the new business has begun trading.
The UKIPO notifications also have the added benefit of being free of charge; however, you may decide to supplement them with a professional watching service to ensure you are notified of applications which may be of concern to you not considered by the UKIPO to be similar to your trade mark registration.
A registered trade mark is intellectual property and is therefore an asset for your business. By maintaining a registration covering your business name you are ensuring that the trust and goodwill established in the name is protected and that consequently the risk associated with third parties trying to take advantage of this is reduced. This in turn increases the valuation of your business and can help with attracting investment.
As your business grows, increased brand awareness further enhances the value of a trade mark registration covering your business name and ensuring that third parties cannot begin use of conflicting trade marks that might lead to loss of customers or dilution of your brand value.
Once registered as a trade mark, you can apply the ® symbol after your business name on marketing material to signify that it is registered as a trade mark. This symbol will help provide additional legitimacy to your business.
Finally, a registered trade mark covering your business name facilitates clearer and more structured business partnerships as it allows you to more easily licence use of your name to others. It also provides existing and potential business partners with more security that you can police your brand.
If you are already trading overseas or have ambitions of doing so, then trade mark protection in countries outside the UK is likely to be something that will help your business to establish itself and operate in a new country.
One of the most cost-effective and streamlined ways to obtain overseas trade mark protection is via the Madrid International trade mark system. However, to apply for an International trade mark registration you must first have a “basic application” or “basic registration” in your home country, for example a UK trade mark registration if you are a UK registered company. So, applying to register your business name in the UK is the first step for expanding protection overseas using the international system.
Another important consideration is that for the first five years an international trade mark registration is tied to the fate of the basic application/registration. If the basic registration is lost within those five years then the international registration is also lost. It is therefore advantageous to have a basic registration that is well established for a number of years and which is therefore unlikely to be successfully attacked.
Unlike some other intellectual property rights such as copyright, designs and patents, trade marks can be renewed indefinitely if they are used in trade for the goods/services they are registered for and a renewal fee paid every ten years.
Once you have set up a solid platform of trade mark protection for your business name it is effectively set for life and you should be able to prevent third parties from using a similar name on similar good/services indefinitely, as long as you continue to use the trade mark for the goods/services that it is registered for. The registration is liable to be cancelled if you cannot prove use of the mark in trade for the registered goods/services in the preceding five year period. Furthermore, if you anticipate that your business will transition to offering new goods/services not covered by an existing registration it is best to apply for a new trade mark registration covering those new goods/services as soon as possible to ensure continuous protection.
At Wilson Gunn we have significant experience dealing with businesses of various sizes and differing levels of trade mark protection and we understand the value that a registered trade mark can bring to a business. For further information about registering a trade mark for your business name, please get in touch to speak to one of our attorneys.