Trade Marks
Trade Marks Making the intangible, tangible

This information has been adapted from CIPA

What is a trade mark?

Trade marks are signs which are used to distinguish the goods or services of one business from those of another. In this context, the word ‘sign’ is used very broadly. Although most trade marks are words or logos or combinations of the two, other forms such as three-dimensional shapes, combinations of colours and even sounds and smells may be, and indeed are, used as trade marks.

Trade marks can be considered as essentially indications of the origin of a particular product or service. The formulation or make-up of many products sold under a particular trade mark may well vary as time goes by, but the trade mark will remain unchanged. Trade marks are an most important means of protecting the reputation and goodwill that a business has built up. The reputation and image of most products and services is a result of a whole range of different factors such as quality, customer satisfaction, availability, advertising and competition.

How do I create a trade mark?

If you are going into business and think you will need a trade mark, how do you go about choosing one? You will not be surprised to learn that there is no single “best way” of creating a trade mark.

There are a number of factors you should always bear in mind. Examples of such factors are:

  • What kind of image do you wish to create in the market place?
  • What types of marks do your competitors use?
  • If your trade mark is a word - even a made-up word such as KODAK - does it have a different, silly or obscene meaning in other languages in countries where you intend to market your product or service?
  • Is the mark distinctive (made-up words are usually distinctive)?
  • Are there any existing marks owned by your competitors, which might be confused with the one you wish to use?
  • If your product is a consumer item and you decide to use a graphic device as a trade mark, how are your customers going to ask for it?
  • Can you devise a trade mark that has some association with the products or service it is intended to identify without being a purely descriptive term?
  • Is your trade mark memorable?
  • Does your trade mark have some current, fashionable, connotation that could rapidly appear ‘old-fashioned’?
  • For the markets in which you intend to sell, does the colour or combination of colours you may have selected for use in your trade mark have any particular significance?

Can I use the trade mark I created?

It is possible that the mark you just created is confusingly similar to, or even the same as, a mark someone else has already registered and/or is using for the same goods or services you intend to use your mark for. It is therefore important to do searches to ensure that you can in fact register your mark and that you do not get any nasty surprises when you start using the mark, such as a letter threatening to sue you for trade mark infringement.

Why should I register my trade mark?

Nobody will bother to imitate a little-known trade mark but once your trade mark begins to become recognised in the market place it becomes a possible target for unscrupulous people wishing to cash in on the reputation you have worked so hard to create. Registration of your trade mark won’t unfortunately stop others from trying to cash in on your good name, but, it will make it easier for you to take action against them if they do.

How do I register my trade mark?

You should decide where your trade mark needs protecting and file applications in the countries (territories) you want to trade in. The applications should set out both the mark and the associated goods or services for which registration is sought and should be accompanied by the appropriate fee. An examination of the application will then be carried out by the Trade Mark examiners to determine whether or not it meets all the requirements of the law. Among the issues considered by the UK Patent Office are whether or not the mark is distinctive and whether or not it is similar to another mark registered by another enterprise for the same or similar goods or services. Procedures vary from around the world.

When should I apply for registration?

You can apply to register your trade mark either before you start to use it or afterwards. As a general rule, it is a good idea to apply as soon as possible, to make sure no-one else applies to register the same or a similar mark before you do. However, there may be times when you want to wait until you know whether your product or service is profitable before you incur the expense of registration. Further, it may be that your mark is relatively difficult to register and it may be an advantage to wait until it has a widespread reputation before you apply.

How long will it take to register?

In the UK, it may take one or two months before the Trade Marks Registry (a branch of the Patent Office) examines an application but it is not unknown for the first official comment to arrive within ten days of filing an application! The UK Registry is one of the fastest in the world. If there are objections, it may take several months to sort them out. Typically, a mark is registered in five to nine months of filing but the process may take longer - particularly if there are oppositions.

What does it cost?

The goods or services in your application are classified according to an International Classification and the cost of a UK application varies according to the number of classes the required goods and services fall in.

For a single class application, including the Government fee, charges will be between £450 and £750 (+VAT) to prepare and file an application, depending on how straightforward it is.

Costs after filing can vary from a few to several hundred pounds and will be higher if there are oppositions.

How long will my registration last?

Providing the application meets all the legal requirements the trade mark will be registered and the protection granted will last for an initial period of ten years.

The protection can be extended for further periods of ten years upon payment of the appropriate fee. So, a trade mark can last indefinitely. As an example of this, the famous Bass Red Triangle label trade mark was the first one ever registered in the United Kingdom well over 100 years ago and it is still in force. It is worth noting, however, that non-use of a trade mark within five consecutive years is a ground for cancelling a registered trade mark unless the owner has a proper reason for non-use.

How should I use my trade mark?

To make sure you don’t lose rights in your trade mark, you must use it correctly. This means that you should always use it as if it was an adjective and not as a substitute for the usual word for the goods or services it covers. It is also a good idea to show that it is a trade mark by using the symbol TM (or ® or ‘Registered’ if, in fact, the mark is registered). You should always prevent other people from using your trade mark incorrectly. For example, if you notice that someone is using your trade mark instead of the usual word for the product in a trade directory, you should make sure they stop.

What if somebody imitates my trade mark?

The law also provides remedies in the case of trade mark infringement. These remedies include damages, the seizure of goods and material to remove offending marks, cessation of infringing acts and the surrender of unlawful profits. Under certain circumstances there are also criminal remedies. You should always take action very quickly.

Where do I register?

It is usually the best policy to register your trade mark in every market in which you intend to sell your goods or services. There are various international conventions covering trade marks which can assist in the process of obtaining broad international protection for your marks. Most notable are the Office for Harmonisation in the Internal Market (OHIM) which is the European Union’s Trade Mark Office and the Madrid Protocol which is administered by the World Intellectual Property Organisation (WIPO - a specialised United Nations Agency). However, the process can be complicated and costly: you are well advised to obtain professional advice in these matters since it is easy to go wrong.