Registering Trademarks
- may put people off using your trade mark without your permission
- make it much easier for you to take legal action against anyone who uses your trade mark without your permission
- allows Trading Standards Officers or Police to bring criminal charges against counterfeiters if they use your trademark
- means you can sell it, franchise it or let other people have a licence that allows them to use it.
- trade marks are registered for a fee by the Intellectual Property Office in the UK and other bodies worldwide.
They must be renewed every ten years, but can be renewed indefinitely. Registered trade marks can be identified by the ® symbol.
The most effective trade marks are those ‘distinctive’ to the goods and services they protect. This allows consumers to identify your goods or service from your competitors.
Not everything can be registered as a trade mark. Trade marks which can be difficult to register include those which:
- describe the products you sell or the services you offer, for example ‘mature cheese’;
- are not clearly of commercial origin for customers, for example, the phrase ‘Putting Customers First’
- have become customary in your line of trade, for example ‘Four by Four’ or ‘4 x 4’ for vehicles
- include a specially protected emblem, for example, the ‘Red Cross’ or the ‘Olympic Rings’
- are offensive to the public, for example, trade marks which contain taboo words or pornographic images;
- deceive the consumer
- are three dimensional shapes which are typical of the goods you are interested in, for example, the shape of a simple plastic bottle for your drink product
If your trade mark does not fall into any of these categories, there is a good chance that it will be considered acceptable for registration.
If, after being published, your trade mark does not then attract any objections from other trade mark holders, it will be registered.
You should receive a formal report explaining the outcome of the examination within 10 days of applying. If your application is acceptable, it can be registered in as little as 3 months from the date of filing. It can obviously take longer if you have objections which you need to overcome.
Getting help
For advice on building your brand, registering overseas or more complex aspects of the trade mark process, contact the Chartered Institute of Trade Mark Attorneys.
For more information on trade marks, including how to search for existing registered trade marks and how to register internationally.
Unregistered trade marks
If a business doesn’t register its trade mark, it may still be able to take some action if someone uses the mark without permission. It would need to use the common law action of ‘passing off’. However, passing off can be very difficult and expensive to prove.
Broadly, to be successful in a passing off action the trade mark owner must prove that:
- There is protectable goodwill in the mark;
- There is a misrepresentation of the mark, and
- That misrepresentation caused damage.
Without misrepresentation there is no passing off. This is a complicated area of law and in any such situations it would be wise to seek advice from an IP Attorney.
