What is a trade mark?
Trade marks are signs such as logos and brand names which distinguish competing goods and services within the marketplace.
Why should I register my trade marks?
Registering a trade mark protects your investment in your brand by giving you the exclusive right to use your mark within the UK for the goods and services for which it has been registered.
Registering a trade mark makes it easier to:
- prevent unauthorised use of your brand by third parties;
- authorise others to use your brand for a profit (e.g. through licensing deals, franchising or selling your rights); and
- put third parties on notice regarding your brand through a public registration process.
What about protection outside the UK?
Registration of a UK trade mark provides protection in the UK only. If you require broader geographical protection then you could consider applying for a Community Trade Mark (which provides protection throughout all of the EU Member States). Once you successfully register a UK or Community Trade Mark there is also the possibility of applying for an “International Trade Mark” in many other international territories via a single application through a process known as the Madrid system.
Do I need a trade mark if I have already registered my company name?
Registering a company name does not provide the above benefits or give you any protection from third parties using the same or a similar name for their business. Therefore trade mark protection is just as relevant for businesses who have registered their brand as a company name.
Are there are any restrictions on what marks can be registered?
In order to be registerable a mark must be sufficiently distinctive and must not be descriptive of the goods or services for which it is being registered, or characteristics of them.
For example, the phrase "Edinburgh Solicitors" would not be accepted for registration as a trade mark in relation to services provided by a solicitor's firm on the basis that it is descriptive of characteristics of those services. It would also be refused registration as lacking distinctiveness on the basis that the mark is commonly used within the legal profession and would not be capable of distinguishing one company's services from another's
There are other restrictions on what can be registered as a trade mark, such as public policy restrictions on registration of marks which are deceptive or offensive. One of the ways that a solicitor can assist you with your trade mark application is advising on potential issues with the registerability of your mark and, where necessary, suggesting alternative registration strategies.
What about existing marks?
It is advisable to carry out searches for any conflicting marks before submitting an application for registration. The holders of any existing registered marks which the Intellectual Property Office identifies as being sufficiently similar to create a risk of confusion will be notified and may decide to oppose registration of your trade mark. In some cases it is possible to overcome potential opposition or to avoid the requirement to notify by amending the scope of the application.
How long does it take to register a trade mark?
Straightforward applications which are not opposed typically take between 5-6 months. More complicated applications, or applications which encounter opposition can take considerably longer.
How much does it cost?
Application fees payable to the Intellectual Property Office start from £170 and increase by £50 for each “use class” (categories of goods or services) included in the application. Morton Fraser offers a fixed fee trade mark registration service starting from £600+VAT. Overall costs for a straightforward application for a UK trade mark made by an experienced solicitor on your behalf could therefore typically be in the region of £1,000-£1,200.