In a previous post, our client Rachel Ward explored whether you should trade mark a new business name or logo. (If you missed it, the answer is yes, you should – regardless of your business’ age, size or annual turnover). That inevitably leads to the question: how do you trade mark a new business name or logo?
Thankfully, Rachel’s back to explain. You see, as a Chartered Trade Mark Attorney at Ward Trade Marks, she knows a thing or two about it.
(Hint: it’s not as straightforward as you might hope).
How to register a trade mark
First up, let’s bust some myths. Registering a trade mark is not the same thing as registering your business name and domain with Companies House. Instead, it involves making a complicated, long-winded application to the UK Intellectual Property Office (IPO). If you want to protect your intellectual property rights outside the UK, you’ll also need to apply for an international trade mark.
No two applications are the same. That’s the very point of a trade mark – it’s unique to your business. Generally, however, the process of registering a trade mark involves the following eight steps.
- Check that you have a trade mark
This might seem obvious, but you actually need to have a something that qualifies as a trade mark before embarking on the process. This can be anything that allows consumers to distinguish your brand from another. Usually, trade marks are graphic representations such as brand names and logos. Colours, patterns, shapes and sounds can also be trade marked.Certain things cannot be trade marked. This includes words that describe the goods or services you intend to sell. If you get this wrong, the application will be rejected by the IPO at the examination stage. You will lose the cost of the application and will have to start all over again.
- Search the trade marks database
The next step is to thoroughly trawl through the trade marks database. This is a database of all the registered trade marks in the UK. It’s also possible to check the IPO’s online journal to see what trade marks have been accepted in the last week. The purpose of this search is to check if anyone has already registered a similar trade mark. If so, it could be a problem. You’ll need to halt your application process and consider your options. Either, you’ll need to get permission to proceed from the registered trade mark owner in a letter of consent. Or, you’ll need to rebrand.Failing to search the trade marks database puts you at risk of legal action in the future. That’s because if you register a trade mark that’s similar to someone else’s, then you could be accused of trade mark infringement. Take note: your business name or logo doesn’t have to be identical to land you in hot water – it simply has to be ‘similar’.
- Draft a specification
OK, so now you have a trade mark and you’re confident that you won’t be accused of intellectual property infringement. Now it’s time to prepare your application. This is where it starts to get really complicated.The application requires a detailed specification of your trade mark. This sets out exactly what you want to register, and the trade mark classes you want to register in. There are 45 classes of goods and services to choose from. A trade mark lasts for 10 years, so you need to select the classes that you operate in now, and the ones that you’ll operate in, should your business expand in the future. If you have different variations of your trade marks, then a series application may be more cost-effective.
Here’s the catch: if you get the specification too narrow, then you’ll limit the scope of your business and you won’t be fully protected. But if it’s too broad, then you’ll be considered a trade mark troll. You may subsequently face claims for non-use of a trade mark. So, when it comes to a trade mark specification, you need to get it just right.
- Submit an application
Once the paperwork is ready, it can be filed with the UK Intellectual Property Office. The correct fees must also be paid. You cannot change your trade mark once you’ve applied, so you must be 100% certain that everything has been completed accurately. The fees are also non-refundable. If your application is ultimately rejected, or you need to make another one, you’ll rack up additional costs.If you want to protect your trade mark on the international stage, then additional applications are required. For example, to register your trade mark in Europe, an application must be submitted to the European Union Intellectual Property Office (EUIPO).
The IPO will consider your application and provide an examination report within 40 working days. The IPO will tell you if they have found another registered trade mark that is similar to yours. It will not reject your application on this basis, although as described above, you could face challenges if you do not amend your branding. The IPO will, however, reject your trade mark registration if it:
- Describes the features of the goods or services
- Lacks distinctive character
- Is customary in everyday language or trade
If the search report highlights conflicts with an existing registered trade mark, you have a specific time frame in which to respond, setting out your intentions. You might want to amend or withdraw the application. If the IPO does not receive a response by the allocated deadline, it will assume that you want to proceed with the original application and will notify the owner of the earlier trade mark about your application so that they may object to your application if they wish to.
Your trade mark application will then be published online for a minimum period of two months. The purpose is to alert other businesses to your application, who may then wish to oppose the registration. Oppositions are typically raised if your trade mark is similar to an existing registered trade mark. You might also be accused of acting in bad faith, especially if you have made your specification so broad that it covers things you have no intention of selling.
If an opposition is raised, then you will have to defend the claim. If you don’t, then your application will be deemed abandoned. You may then be liable to third party costs. To avoid this, your options are to withdraw, to negotiate a mutual agreement with the other party, or to fight the opposition. To do so you will need to issue a counter statement and later there will be evidence rounds and eventually the matter will be decided in a Hearing at the UKIPO. The opposition process will be lengthy and expensive.
Finally, if there are no ongoing oppositions or other issues, the UK IPO will register your trade mark. This lasts for 10 years, after which it can be renewed. The entire process takes around six months from start to finish provided there are no issues. If there are mistakes or problems with the application, you may have to begin all over again – and pay another set of fees.
Ask a Trade Mark Attorney for help
If the above description doesn’t frighten you, then it’s because it’s only a broad overview. There’s actually a lot more to registering a trade mark than you realise. Some people are tempted to go down the DIY route. After all, you can just Google the answers, can’t you? Well, not really. In the same way you wouldn’t handle your own conveyancing process, it’s not recommended that you manage your own trade mark registration. It’s a highly legal process, and as such, it’s best left to the legal experts.
If you use a Trade Mark Attorney, then the process of registering a trade mark becomes incredibly simple. In fact, you only need to do two things:
- Come up with a brand name and logo; and
- Instruct a Chartered Trade Mark Attorney
Your Attorney will do everything else. This includes checking that your trade mark meets the criteria, does not conflict with an existing trade mark, and is registered in the correct trade mark classes. If there are any issues, your Attorney will handle them for you, dealing with any concerns or oppositions that are raised. This streamlines the process, limiting the risk of rejection and future legal action.
While using a Trade Mark Attorney carries additional costs, it’s the best way to protect you and your business. Ultimately, that’s what registering a trade mark is all about.