A trade mark can be protected by registering the mark at the UK Intellectual Property Office (IPO), provided that the mark is:
- A sign. This is a very wide definition and covers words, logos, colours, shapes, and even a sound;
- Capable of being represented in a manner that can be precisely and clearly determined. For example, colour marks must be described using an internationally accepted colour classification system, and sounds are usually described by reference to musical notation;
- Capable of distinguishing goods and services; and
- Not descriptive and customary in the trade.
It is also possible to file for a European trade mark at the European Intellectual Property Office (EUIPO) which covers all the member states of the EU. When applying for registration, you must consider what goods and/or services the mark will be used in relation to. A registration only covers specific goods or services. There is an internationally agreed system used to classify goods and services called the Nice Classification. For instance, Class 20 covers furniture, mirrors, and picture frames.
Is the registration process complicated?
The initial fee to register a trade mark in the UK is only a few hundred pounds and the registration process takes about 4 months if no-one objects to your application.
Once registered you will have acquired the right to prevent others from using your trade mark in the UK, provided that the registration is renewed every 10 years. This will give you the time and confidence to expand your brand without the risk of a very similar brand competing with you.
Are trade marks really necessary?
It is sometimes said that trade mark registration is unnecessary because you can rely on unregistered trade mark rights through a common law claim for passing off. Passing off occurs when an unregistered trade mark enjoys good will and the origin of goods or services is misrepresented through use of that trade mark. However, passing off actions are uncertain and often difficult to establish.
Ultimately, trade mark registration is relatively simple and low cost and it will give you (and your investors) the peace of mind and brand value not offered by passing off rights.
How can you enforce a trade mark?
To protect your registered trade mark, you must police it. Although the UK IPO registers your trade mark, they are not responsible for ensuring the exclusivity of its use. The first step is to use the ® symbol to show that your trade mark has been registered. This will help deter third parties from using your mark.
If you do become aware of someone infringing your mark it is important to assert your rights as soon as possible to protect your brand and reputation. Often a cease and desist letter is all that will be required to put the infringer on notice. However, if this does not work you should consider taking legal action against an infringer.
The time and effort put into protecting your trade mark through monitoring is an important element of keeping your brand and company under your control.
An IP lawyer can help you design an enforcement strategy to preserve your rights.
