What is a trade mark?
A trade mark is a legal protection for part of a business’s brand so it can’t be used by someone else. A trade mark can be something associated with a business, like a logo, a product, or be the name of the business itself. We’re surrounded by trade marks every day like the Nike tick or the word ‘Google’.
A trade mark can also be more than a name; it can include words, sounds, colours or a logo, all of which are protected by trade mark law once you’ve been granted your trade mark certification. This can help you to build your brand recognition and signpost to customers who they’re buying goods from.
What’s the difference between a trade mark and a business name?
Deciding on a business name and a trade mark are two important steps in establishing your business and shouldn’t be confused as being the same thing. Your business name is the name you choose to register at Companies House when you set up your business. Once you’ve registered it, others can’t register a business with the same, or similar, name. However, it doesn’t legally protect it from those who may want to use the same name elsewhere in their branding. Therefore, if you’re intending to build your business name into a recognisable brand it may be smart to trade mark your name too.
In a similar way, if you choose to trade mark your business name before registering your business with Companies House there aren’t any guarantees that you’ll be able to register it as your business name. You may find the name has already been taken.
What’s the difference between a trade mark, a copyright, and a patent?
Trade marks, copyrights and patents are all used to protect intellectual property (IP), and which one you use depends on what type of work you’re trying to shield.
Copyrights are used to protect original authorship of artistic works such as novels, music and art. A patent is used to protect an original new process or invention for a set period of time. And trade marks are designed to protect a brand’s identity by ensuring that other businesses can’t use similar words or symbols, which would be confusing for customers.
Why register a trade mark?
It takes a lot of hard work to create a brand so it makes sense that you’d want to protect it. The advantages are:
- another business legally can’t use it
- it can help customers from being duped into thinking they’re buying something from you when they’re not
- it can help returning customers to find your goods again, build your brand identity and loyalty, and enhance your credibility
- it can also help you to grow your brand as it’s a good foundation for applying for trade mark registration in other countries
The barriers to registering a trade mark are:
- the additional costs involved as well as the extra admin, time and legal fees required to do so
- a trade mark only lasts ten years so the process will need to be repeated in order for it to stay protected
- it will protect you in the UK, but may not apply to trade mark violations from companies elsewhere in the world
What can and can’t be trade marked?
You’ll need to decide what your trade mark consists of, including images, words, colours and sounds. A completely made up word is a brilliant way to create a trade mark, like ‘Kodak’ or ‘Google’, or choosing a word that wouldn’t usually be used to describe your goods or services, like how ‘Dove’ is a hygiene company or ‘Apple’ sells technological devices. You can read more about naming in How to come up with a business name.
Similar to when you register a business name, there are some things that you can’t use in your trade mark. Your trade mark shouldn’t be:
- offensive (including swear words or pornographic images)
- descriptive of the goods or services it’s related to, for example the word ‘sports’ can’t be a trade mark for a sports clothing company
- misleading, for example using the phrase ‘carbon neutral’ for goods that aren’t carbon neutral
- an overly common and non-specific phrase
- a generic shape associated with your business, for example if you sell footballs you can’t trade mark the shape of a football
- a national flag (that you don’t have permission to use) and other official emblems or hallmarks (like a coat of arms)
How to check trade mark availability
If the trade mark you want already exists you should seek professional help to find out what you can do. You can get free advice from the IPO, an intellectual property clinic or the British Library Business and IP Centre in London, or you can pay for the assistance of a trade mark attorney. Whatever you choose to do, it’s smart not to apply for a trade mark if you know that the same one, or similar, already exists. Carrying out these checks before applying will save you precious time and money.
How to apply for a trade mark
Another task before applying is to use the official classification service to decide which general category (also known as ‘class’) and specific type (known as ‘term’) of goods or services you want your trade mark to be applicable within. A ‘class’ is a category of goods or services (like clothing) whilst a term is more specific (like sportswear).
You’ll need to choose at least one class and one term, although you can choose more. But they should all be relevant to your business for at least the next five years. And remember, your trade mark will only be valid within the classes and terms you select.
Done your checking and ready for the next step? Here’s how to apply to trade mark a name:
- Prepare your application by detailing your trade mark, for instance the words or illustration you’d like to use, and the classes and terms you want to register it within.
- Decide on what type of application you want to make: Standard Application or Right Start Application.
- Sit back and (hopefully) relax whilst the IPO examines your application. They’ll search for similar trade marks and, if they find one, contact the owner directly. If there are no objections, they’ll then publish your application in the trade marks journal.
- If your trade mark is unopposed the IPO will officially register it and you’ll receive a certificate to confirm your trade mark registration. You should receive your certificate three months after submitting your application and it will last for ten years before you’ll need to renew it.
If your trade mark is opposed you can talk to the person opposing it, withdraw your application or defend your application legally. It’s common throughout the process, whether you face opposition or not, to have a lawyer assist with your trade mark registration as trade mark law can be tricky to navigate on your own. A lawyer can also help you understand what you will own through your trade mark and how to defend it.
How to use your trade mark
Once you’ve received your certificate you can start to use your trade mark. To signify your trade mark, place the symbol ® next to your brand which will signify to others that it’s legally protected. After certification, you can object to anyone who tries to register a trade mark too similar to yours, and you can also sell, market, license and mortgage your trade mark if you so wish.
Trade mark infringement is when someone uses your IP without your permission – including your trade mark. If this happens to you, you can seek legal advice from a solicitor who deals in IP, reach out to the IPO for help or contact Citizens Advice. If you want to remain anonymous, you can also report it through Crimestoppers and Action Fraud.
Xero does not provide accounting, tax, business or legal advice. This guide has been provided for information purposes only. You should consult your own professional advisors for advice directly relating to your business or before taking action in relation to any of the content provided.
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