Guest Blog by Kate Cruse of Forresters
What is a trade mark?
A trade mark is your name. Your brand. How your customers and clients remember you.
Trade marks were traditionally seen to be:
- words
- numeral
- letters
- logos
- and any combination of the four
that served to enable the public to distinguish the goods and services provided by a trader from those provided by another trader.
More recently other types of trade marks have become deemed worthy of protection, including:
- scents
- sounds
- shapes
- and packaging
In order to gain registration of a trade mark it is necessary to be able to clearly represent the sign you are wishing to protect. If you are looking to protect a non-traditional sign, such as a shape mark, some thought needs to be given regarding how to represent the mark upon filing.
How do I file an application?
When filing an application it is necessary to state who will own the trade mark, the address of the owner, provide a representation of the trade mark and a list of the goods/services to be covered. It’s also necessary to think about where you file the application, based on the geographical coverage of your business; for example, UK, EU, China, etc..
How much will it cost?
It depends upon the geography you wish to cover and how broad you would like to go in terms of goods and services covered by the trade mark.
How long will the process take?
In a straightforward case, a UK or EU trade mark application should gain registration around 5-6 months after filing.
What is a trade mark registration?
A trade mark registration a certificate confirming the grant of monopoly rights to the trade mark owner by a public institution (in the case of the UK, the UK Intellectual Property Office (UKIPO)), during a set term (in many cases 10 years).
The scope of rights granted depends upon the request originally made, and as such it is important to understand fully the complexities of the law when filing an application.
Registering a company name with Companies House does not have the same effect, and if you do not register your company name as a trade mark, someone else may be legally entitled to use, as a trade mark, the name which you have registered as a company name.
Why should I register my trade mark?
Prevention:
If you have a trade mark registered many third parties will undertake clearance searches prior to adopting a new trade mark to check that their mark is free for use and registration. If your trade mark is located by the search, the third party will be warned off using and registering their chosen mark.
Cure:
If another trader seeks to gain registration of a mark identical or similar to your earlier trade mark, or use that mark in business, it is possible to oppose the application or use based on your earlier registration. In the alternative, should your trade mark not be registered it may be possible to oppose the application or use on the basis of an un-registered trade mark but you will have to demonstrate to the UK Intellectual Property Office or the Courts that:
- you have a goodwill/reputation in the mark
- that registration or use of the later mark would act as a misrepresentation of your rights, and
- the registration would damage your business
Significant evidence is required in order to prove the above points and this can be a time consuming and expensive exercise.
For more help on trade marks, feel free to contact Kate on 0151 255 2180.
