Partner Nick Burrows, in our Corporate & Commercial team, looks at trade marks and why they offer more than just brand protection.
Trade Marks are everywhere and these names, words, sounds and symbols pervade our lives, providing a constant reminder to consumers and a visual access point for brand owners. The purpose of a mark is that it distinguishes your goods or services from those of another and reassures a purchaser of the origin of the product. The value of brands rise and fall; a few months ago Volkswagen had excellent brand value, which has reportedly diminished by $10bn in the last month and it is worth investing in and protecting your brand with trade mark registration.
Clients often ask us whether they can register their trade marks themselves and we often say “yes.” Problems can arise though when clients under-estimate the work necessary to file an application or race ahead with a trade mark that they have not adequately researched before starting to use it.
Why Register?
Registering a trade mark grants the owner a monopoly right to use their registered mark and to prevent others from using it without their consent. Trade marks usually form part of a wider brand strategy and are used to develop brand awareness. Trade mark registrations last for 10 years and can be renewed continually every 10 years thereafter. If a mark is not used for 5 or more years, it can be removed from the register and so you must be prepared to “use it or lose it!”
What Marks Can I Register?
Words, logos, pictures and mixes of all three can be registered, as can shapes and sounds. You should only apply for registration of your mark once you have finalised the design of it because if you change it after you have made your trade mark application, you will have to apply for an entirely new registration. Commonly used, purely descriptive or non-distinctive words cannot usually be registered unless you use them in a way that is not obvious; “apple” was not an obvious mark for a brand of phones, but it would be obvious for a food product. Short words, single letters and numbers can also be difficult, but not impossible to register.
What Goods/Services Will you Use the Mark on and Where?
Trade marks are registered according to the goods and services they will be used on. We can advise you which classes of registration are appropriate for your products or services as there are 45 different classes and the goods and services must be described according to these classes.
As marks are registered nationally, you should consider the territories where your brand is used and where you will launch in the short to medium term. A national registration in the UK, US etc. will only protect your mark against infringement in those countries. It is possible to register a Community Trade Mark which will protect your mark against use by others in all member states. This process is relatively quick and can be cost effective and we can advise you if this is a good strategy for you to adopt. Similarly, marks can be registered worldwide by filing a single application at WIPO and designating the countries where your mark will be used in your application.
Should I do a Trade Mark Search Before I Apply?
We always recommend undertaking a trade mark search to reveal whether any identical or similar marks are registered in the classes you intend to register your mark in. A prior registration may prevent your mark from being registered or lead to objections against registration of your mark application. If similar marks are registered, this is not necessarily fatal to your application, but you should seek specific advice on search results before making you apply.
DIY applications can be straightforward. Where we advise against 'DIY' is when the mark itself is complex, such as a series of marks, colour variations, a musical ident or a personal image. Marks in new and emerging fields of business can also be difficult to classify and the UK IPO will ask for clarification of your goods or services if it has not come across them before. Sometimes the way you describe your business within your industry or to customers may not easily fall into the IPO’s specification and so your specification will need to be clarified by the IPO. In these cases it is preferable to use a lawyer to help ensure your mark is protected in the correct classes, the correct countries and is defended in the best way.
For further information or legal advice, please contact law@blandy.co.uk or call 0118 951 6800.
This article is intended for the use of clients and other interested parties. The information contained in it is believed to be correct at the date of publication, but it is necessarily of a brief and general nature and should not be relied upon as a substitute for specific professional advice.
