If you are trading as a business then you may wish to consider getting some form of trademark protection in place.
It’s a common misconception that registering a limited company offers trademark protection.
In fact, all it does is stop others from registering a company with the same or a very similar name.
Therefore you will need to go further than this if you want to protect your brand and to make it illegal for anyone else to trade using your name without prior approval.
What is a Trademark?
An obvious first question is ‘what is a trademark?’ since some people think it only applies to graphical logos and others believe it only applies to text and words. In fact, a trademark can be either of these things.
Usually your trademark will be the same as your brand. This means that whilst you may be registered as ABC Limited, your product or service may actually be known as XYZ. In this case the trademark you probably want to protect is XYZ since this is how most customers may know you.
Therefore a trademark is the name or visual image that your customers use to distinguish you from your competitors.
Trademark Registration Requirements
It’s important to realise that not all words and graphics can be registered as trademarks.
For instance a name or image that is very generic and describes a type of product more than a specific brands is unlikely to accepted for registration.
As an example – whilst you may be able to register ‘XYZ’ as a trademark, it would be unlikely you would be able to get trademark protection for ‘Mountain Bikes’.
This is because ‘Mountain Bikes’ describes a type of product rather than anything unique about the brand.
This is not the only requirement, the Intellectual Property Office (IPO) have issued the following guidelines:
Trade marks are not registrable if they:
- describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;
- have become customary in your line of trade;
- are not distinctive;
- are three dimensional shapes, if the shape is typical of the goods you are interested in (or part of them), has a function or adds value to the goods;
- are specially protected emblems;
- are offensive;
- are against the law, for example, promoting illegal drugs; or;
- are deceptive. There should be nothing in the mark which would lead the public to think that your goods and services have a quality which they do not.
The full guidelines can be found on the IPO website.
How to Get Trademark Protection
Registering a UK trademark is a relatively expensive and drawn-out process, however it is one that can be done without the help of a lawyer if you wish to keep costs down.
Even without a lawyer you should budget to spend an absolute minimum of £200 in order to gain your trademark protection. If you feel this is a worthwhile expense for your business then the process to follow is:
Step 1: Perform a basic trademark search
This is to see if there are an existing trademarks in force that may affect your application. If there is an existing trademark for a brand that looks or sounds the same or similar to the one you wish to register then there is a chance that they will appeal against you registering yours.
If they do and they win the challenge you will be liable to still pay the costs so it’s important to take this step seriously. A free basic search can be performed on the IPO website.
Step 2: Classify how your trademark will be used
In order to submit a successful trademark protection application you’ll need to provide a list of the goods and services your trademark will be used on. The IPO publish a list of different classifications so that you can decide which ones apply to you. You can view the list by clicking here.
Step 3: Submit the application
The application for trademark protection can be submitted online and there are two options to choose from. The standard option is non-refundable even if your application is not accepted.
However, if you pay slightly more you will only pay 50% up-front and then, once an examination report has been prepared for you you can choose whether to continue with the application. In this case you will only pay the remaining balance if you do choose to proceed.
What Happens After You Apply?
Once your application has been submitted an examination report will usually be prepared for you within 15 working days.
This report will detail whether there are any similar trademarks in existence that may affect your application and it will help to indicate if your application is likely to be successful.
If you decide to proceed with the application your requested trademark will then be published. This allows third parties to raise any objections if they feel your requested trademark should not be accepted.
If there are no objections then your trademark will become officially registered. Trademarks that receive no objections usually take around 3 months to register. Those that are challenged can take considerably longer.
Are There Any Other Options?
In terms of getting full legal protection – registering a trademark via the IPO is the only way to fully protect your business.
As mentioned previously, you can register a dormant limited company using the trademark but this will only prevent others registering a limited company of that name.
Additional it should be noted that any word can be claimed as a trademark by using the TM symbol next to it. However, this has no legal significance and merely informs people you are using it – it does not give you any legal rights.
Using the letter R in a circle signifies the trademark is registered and can therefore only be used legally if the above trademark protection registration process has been completed successfully.