If you’re investing time, money and effort in your start up business, it makes sense to to protect your brand. Here’s our guide to how to trade mark your brand name.
Many small businesses want to trade mark their brand name, logo design and other brand materials when they start up. Registering a business or product name as a trade mark is a priority, but the process of trade marking can be costly and time consuming.
A trade mark itself is straightforward. A trade mark is any design, sign or words that can be shown graphically and can be used to clearly identify a business, product or service. It covers brand and product logos, specific words and slogans, and even images – anything that means an average consumer would be able to identify a business or product from seeing it.
Trade marks can be words and names, such as ‘Nike’ or ‘Morrisons’, slogans such as Nike’s ‘Just Do It’ or numbers and images, such as the Nike Swoosh or Tick logo. When you trade mark a name, you protect it from being used by other businesses, and reserve it exclusively for your use.
Why register a trade mark?
Registering a trade mark will help you protect your brand, such as the name of your product or service. If another business or person uses the trade mark without your permission, you can stop them through legal means and claim compensation. This makes your brand more valuable, which can help when seeking investment for your start up.
There are a few other advantages:
- Prevent fakes and counterfeiters: If anyone copies your brand or passes off your designs and names as their own, you can take legal action against them.
- Show your brand is protected: – You can use the ® or™ symbols alongside your logo and any trade marked words, showing others that it is protected.
- Turn your brand into an asset: If it’s trade marked, you can treat your brand as an asset, including selling it to others.
Watch this: Still unsure if you need to apply to register a trade mark? Legal expert Ben Travers of Stephens Scown LLP talks about trade marks and branding in this video for the In A Nutshell series:
What you can and can’t register as a trade mark
There are lots of rules detailing what’s acceptable to register as a trade mark, and what you can’t. In general, you can register logos, specific applications, use of colour, sounds and words in any combination. For example, you can trade mark a logo in different colours along with words such as a brand slogan or phrase.
It must be distinctive and unique to be able to be registered – and many trade mark applications fall at this hurdle. To avoid a failed application, check the following rules that apply when registering a trade mark:
- Misleading words or images: A trade mark can’t be misleading, such as claiming something is British when it’s made overseas.
- Generic or common terms: Bland, generic terms such as ‘we serve customers’ will fail, as trade marks have to be distinctive.
- Obvious terms and images: Avoid using terms or images in your trade mark that describe the business. For example, the word ‘plaster’ could not be used to solely describe a plastering business. You also can’t use 3D shapes connected with the trade mark, such as a 3D car for a car manufacturing business.
- Offensive terms: Trade marks that contain words or images likely to offend will fail.
- Flags of the world: A trade mark cannot use images or symbols that are similar or the same as existing state flags, such as the Union Jack, nor other existing symbols such as hallmarks.
The Intellectual Property Office publishes a helpful trade marks manual on what is possible to register as a trade mark that is worth a read before applying to register a trade mark.
Check if your trade mark is already registered
It’s worth doing some research before you apply to register a trade mark. A failed application is costly and means going back to the drawing board. Start by searching the trade marks database to see if anyone has already registered an identical or similar trade mark for the same or similar goods or services.
The UK Intellectual Property Office (UKIPO) has a free search engine of both UK and European Community trade marks.
Your search needs to be thorough as when you submit your application it will be forensically scrutinised against existing trade marks. Not only must you search for identical marks, you should check for phonetic, visual and conceptual similarity to rule out any possible customer confusion between businesses.
What if my trade mark is already registered?
There are no short cuts when it comes to making sure your trade mark is unique – but there is a huge difference depending on whether you’re currently using the trade mark you want to register.
If you go ahead with applying to register a trade mark you’re currently using – such as company branding – and it’s deemed to be similar to an existing trade mark, it will be brought to the attention of the trade mark holder. The existing trade mark holder can then take legal action, including forcing you to stop using the trade mark.
It’s worth contacting the existing trade mark holder directly and either attempting to purchase the trade mark or simply asking permission to register your trade mark. If the existing trade mark holder agrees, they can provide a letter of consent that you can include with your application.
If you’re not yet using your chosen trade mark and are willing to choose a different one, then there’s no need for a definitive search prior to applying. The UKIPO will do a search as part of the application process and provide guidance on how close it is to an existing trade mark.
Watch this: Registering a trade mark is a valuable tool for protecting your business brand. This video by BusinessZone highlights the key challenges and offers advice to help get you started:
How to apply to register a trade mark
Applying to register a trade mark is straightforward, and you’ll need three pieces of information for the application:
- Your details: You can file a trade mark application as an individual, or in the name of your limited company by acting on its behalf. You can change the details connected to the application once you’ve submitted it.
- The mark: This needs to be a detailed submission of exactly what the mark is, including details of words, colours and designs. A useful tip is to write the words you’re applying to register in uppercase. The trade mark is then applied to all styles of those words, such as lowercase. You cannot change the mark once you’ve submitted the application.
- The class: Trade marks are registered to one of 45 different classes of business. You can apply for as many as applicable for your business. For example, class 37 relates to building construction, installation and repair services, whereas class 33 relates to alcoholic beverages (not beers). This means you wouldn’t register a new building company brand trade mark in both classes, just class 37. The IPO guide to classifying trade marks is worth a read.
How much does it cost to trade mark a name?
There are two processes you can follow when applying to register a trade mark:
- RightStart application: This costs £100 for the initial application for a single class, and an initial £25 for each additional class you wish to register. Within a few weeks, you’ll get an examination report that details if your application meets the required criteria and if there are any trade mark issues. If you decide to continue, you’ll then need to pay an additional £100 plus a further £25 for each additional class. RightStart is good for new businesses – and if there are lots of issues, you can stop the application process when you get the report and not have to pay the additional £100.
- Standard application: The standard application route is cheaper overall, costing £170 and £50 for each additional class, but it is all payable upfront – this route saves £30 compared to the RightStart application.
After you apply to register a trade mark
Within a fortnight you’ll get an examination report, which will either give the green light for the application to proceed if there are no conflicts, or it will list all the potential trade marks that your registration might infringe. The report will also detail whether the mark itself can be registered.
You can continue with the process even if there are trade mark conflicts but if you do, the IPO examiner will write to the existing trade mark holders to invite them to oppose your application.
Once you receive the examination report, you have two months to resolve any issues and continue the application. If there are no objections in the report, then your application is published in the trade marks journal for two months, during which time anyone is entitled to oppose the registration.
If someone opposes the registration, you can either stop the registration process, try to reach an agreement with the opposing party, or try to defend the trade mark. In the latter case, it’s best to get legal advice at this stage.
Provided there are no further objections, your trade mark will be registered and you’ll get a certificate of registration confirming the trade mark.
Once your trade mark is registered
Trade marks are not registered for eternity, so you’ll need to play an active role in ensuring you maintain your trade mark. You’ll need to re-register every ten years, plus notify the IPO of any details changes such as address or email address. You can sell or use the trade mark as an asset during this time, and keep an eye out for anyone trying to infringe your trade mark.