Once you decide to start a business, there are a number of steps you can take to bring it to life.
However it’s not often that entrepreneurs are aware of the value of registering their business’ brand as a trade mark.
A brand can be a trade mark, but a brand can also exist without being a trade mark.
So why is this relevant to an SME? Is there a difference between a brand and a trade mark? Let´s start with the basics.
Products are made in the factory, but brands are created in the mind*
To put it simply, a brand is the experience, the feeling you want your customers to have before, during and after their interaction with your product and your business. It’s the added value that your product provides and what will differentiate it from the competition.
Your brand can make your customers come back for more. Hence the importance of protecting its reputation and your rights as its owner.
In order for companies to prove ownership over their brands, and enable them to legally prevent others from copying or using them for their own benefit, an international system exists to protect trade mark owners.
With a registration,
- your trade mark is your property, which means you can sell it, franchise it or let other people have a licence that allows them to use it.
- other companies or individuals can’t use your trade mark without your permission and it enables you to take legal action against them
- it allows Trading Standards Officers or Police to bring criminal charges against counterfeiters if they use it without your consent
- your company will be able to use the symbols ™ and ® next to your trade mark
It's worth considering that the rights obtained from a domain (website url) registration or Companies House registration are different from the rights gained from a successful trade mark registration.
There isn’t a legal obligation to register a trade mark, and no requirement (unlike a patent application) that an application to register a trade mark must be filed before using it.
Unregistered trade marks can be protected by the common law tort of passing off. This is where someone else uses your mark or represents the goods or services as their own.
If you register your trade mark, it is easier to take legal action against infringement of your mark, rather than having to rely on passing off.
What can be trademarked?
- A unique word (words, logos or combination of both) used to identify and distinguish the goods of one seller from the goods of another.
- A word or combination that is descriptive of the goods or services is looking to represent is unlikely to be successful and obtain a trade mark registration.
Think Pepsi. The word ‘Pepsi’ does not describe in itself the goods or services it represents.
When applying for your trade mark, you will need to provide a list of the goods and/or services on which you intend to use your trade mark. Trade marks are categorised according to their products or services and there are in total 45 recognised trade mark classes, which include every possible product or service imaginable. It is possible for two businesses to own the same trade mark, as long as they provide different products or services. For example Lion Cleaners can operate alongside Lion Fruit Traders as long as there is no overlap.
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.
Your trade mark must be registered in the country where your business is or is looking to operate, in the UK the Intellectual Property Office is the governmental body responsible for (IP) rights. A registered trade mark must be renewed every 10 years to keep it in force
In the UK it is possible to fast-track trade mark registrations, which means that a straightforward application can complete in four months.
A UK Trade mark registration protects your rights in England, Wales, Scotland and Northern Ireland and is ideal if you do not trade anywhere outside the UK.
A Community Trade mark protects your rights in the 27 member countries of the EU, making the Community Trade mark the mark of choice for many businesses who currently trade abroad, or who plan to expand into Europe, or for those with an exit strategy in mind.
For more information including fees, visit UK Intellectual Property Office.
* Walter Landor
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