FAQs - Trade marks

When you register a name at Companies House it prevents others from registering the same company name to yours. That is the extent of the protection.  On the other hand, a trade mark has the benefit of providing you with exclusive rights to the registered sign for the goods / services it is registered for.  A trade mark distinguishes your goods / services from that of another and allows you to stop others from using the same or similar sign for those goods / services. As such, a Companies House registration, domain name registration and a trade mark registration provide you with three separate legal protections and having one is not a substitute for having the others.

A registered UK trade mark requires to be renewed every ten years in order for it to remain in force. It can be renewed within six months prior to the expiration date and up to six months following that date. Generally the UK Intellectual Property Office (“UKIPO”) will send you a reminder that the trade mark requires to be renewed but you should have it on your radar in any case. If you fail to renew your trade mark by the expiry date, the trade mark will be included in the Trade Marks Journal and will show as “expired” on the UKIPO website. However, it should be noted that a trade mark, as long as it is renewed appropriately, can continue indefinitely.

No. A trade mark can be any sign which is able to be represented graphically and capable of distinguishing your goods / services from that or another entity. As such, what is able to be registered as trade mark is wider than just a name / words and can include logos, images, 3D shapes, colours etc.

When it comes to trade marks the maxim “use it or lose” it applies. As such, if you do not use your trade mark it is vulnerable to being removed from the trade mark register. After a period of five years from the date of registration, a third party can apply to have your trade mark cancelled if it has not been used in the preceding five years. The use needs to be (1) for the trade mark as it is registered; (2) used by the party that owns the trade mark on the register (i.e. if you registered it in your personal name but it is in fact your company that is using the trade mark you may want to consider putting an assignation or licence agreement in place); (3) for the goods / services that the registration covers; and (4) if it is a UK trade mark the use needs to be in the UK rather than in another territory.  Finally, it is possible for the trade mark registration to be partially cancelled if you are using the trade mark for some of the goods / services that it covers but not all of them.

When starting a business, or the business is small in scale, registering intellectual property might be far from your mind. However, it really should be something that you consider at the outset and before any products / services are launched. Whilst we always recommend that advice from a trade mark attorney is taken, in the UK you can register trade marks yourself by visiting UKIPO website. Assuming that the trade mark application is not opposed, the costs of submitting the application with the UKIPO are not substantial and there are a list of set fees here (these may be updated from time to time): Trade mark forms and fees - GOV.UK (www.gov.uk). You will no doubt be spending money marketing, advertising and developing your products / services.  As such, ensuring that this investment is protected is an important reason for registering a trade mark at the outset.

When you register a trade mark you are not under any obligation to use either symbol but it is important to understand that they do mean and denote different things. There are some who would argue that ™ stands for “totally meaningless” rather than “trade mark” as it is often used when the sign is not registered and therefore is not protected in the UK by the 1994 Act. On the other hand, the ® symbol demonstrates that the sign has been registered as a trade mark and is protected by the 1994 Act. Use of the ® symbol then lets consumers know that the sign is protected and acts as a deterrent to anyone who might be thinking of using the sign (or similar sign) themselves. It is important to understand that these signs are not interchangeable (unless you do have a registered trade mark) as it is an offence under the 1994 Act to falsely represent that a sign is a registered trade mark.

No.  If your business is trading in a number of countries or a number of countries are of potential interest to your business, you should think about where else you may require trade mark protection. The protection afforded by a trade mark is territorial in nature. As such, a UK registered trade mark provides your brand with trade mark protection in the UK only.

Registering a trade mark provides the owner with the exclusive right to use that trade mark in relation to the goods and / or services that are covered by the registration. Your trade mark registration should cover goods and / or services that are being offered under the trade mark or that you genuinely intend to offer as the business progresses.  That means that it is possible for other brands to be using the same name and indeed have the same trade mark as you if it is being used for different goods and / or services.

In addition, the registering of your trade mark is the first step. The registration provides you with protection, acts as a deterrent and also allows you to commercialise your intellectual property for example by way of a licence. However, in order to ensure that other brands / businesses are not infringing your trade mark you need to actively enforce your rights and ensure that you are continually policing the marketplace for anything that you consider is too close. This includes any new trade marks that have been applied for. As the owner of the trade mark, it is it up to you to enforce your trade mark rights whether that be in the marketplace or in oppositions before the relevant intellectual property office.

No. The registration of the trade mark will give the proprietor the exclusive right to use the mark in relation to the goods or services for which it is registered. A trade mark proprietor should take care not to use the mark for any goods / services out with the use defined in the registered trade mark as it could potentially infringe a trade mark owned by someone else. It should be noted that when applying to register a trade mark, use classes cannot be added following registration so you should consider all present and future uses of the mark prior to submitting your trade mark application.

Whilst describing your goods / services through the name may seem an obvious and sensible choice when it comes to marketing and consumer awareness, it can pose a problem when it comes to registering a trade mark. You will not be permitted to register a trade mark that is descriptive of the goods / services being offered under the sign. A trade mark is to distinguish your goods / services from that of your competitor and therefore a distinctive trade mark will serve you better in the long run.