What’s in a name?

An introduction to trade mark registration, the benefits, and how Brexit might affect it

Coca Cola, Budweiser, M&M's, Wicked Advertisements Times Square New York

So, you’ve chosen your business name and registered your domain name and social media handles.  That’s enough, right?  Wrong…

If you are serious about your new brand and would like to prevent others from using the same or a similar name, then a trade mark registration is the way forward.

Think about the big brands out there – Apple, Coca-Cola, Nike; they all have trade mark registrations for their brands.  Their brand is one of their key assets; it’s how they stand out from their competitors; and how their customers know the product or service is theirs and not someone else’s.  It is a badge for the company.

A trade mark could be a word, phrase, symbol or logo, although to be registrable it needs to be distinctive and cannot simply be descriptive of your goods or services.

Isn’t a registration of my company at Companies House sufficient?

Incorporating a company, or changing the name of your company, at Companies House will only allow you to stop someone registering an company with a name that is the same as, or too like, yours.  It won’t prevent someone from trading under a trade mark that is the same or similar to your mark.  In the UK, trade mark rights are acquired through use or registration.  It is harder to prove rights through use and expensive to enforce, and so a trade mark registration is the best way to protect your brand.

Where can I register a trade mark?

In the UK, trade marks can be registered at the Intellectual Property Office (IPO).  If your business operates in Europe, then you can also obtain a European Union Trade Mark (EUTM) at the European Union Intellectual Property Office, which will provide protection for your mark in all EU countries.

How much does it cost?

The filing fee for a UK registration at the Intellectual Property Office is £200 for one class of goods or services (£170 online), and then a subsequent £50 for each additional class.  Classes of registration are the categories of goods and services for which you would like your trade mark to apply.  For example, Majestic Wines would want to register their trade marks within class 33, as this covers alcoholic beverages.  A EUTM costs €850 for the first class of goods or services and then a subsequent fee of €150 for each additional class.

How long does it take and how long will it last?

A straightforward UK registration usually takes up to 4-6 months from application to registration, and a EUTM registration takes up to 6-8 months.  It depends on various factors, for example the process can take longer if someone objects to the registration.  However, once you have obtained your registration, it will be back-dated to the date of your application.  This will enable you to enforce your trade mark registration against anyone who has been using your mark since the application date.  Once registered, your trade mark will last for ten years, with the option to renew the registration after the ten years has expired.

What can you do with your trade mark once registered?

Your trade mark registration gives you a monopoly right to use the mark in relation to the goods and/or services for which it is registered.  This means that you have the right to prevent others from using a mark, in the course of trade, that is:

  • Identical to your mark, in relation to identical goods or services for which your mark is registered;
  • Identical to your mark, in relation to goods or services which are similar to the goods or services for which your mark is registered;
  • Similar to your mark, in relation to goods or services which are identical or similar to those for which your mark is registered; or
  • Identical or similar to your mark, where your mark has a reputation in the UK and the use of the infringing mark takes unfair advantage of, or is detrimental to, the distinctive character or repute of your registered trade mark.

For scenarios 2 and 3 above, there also needs to be a likelihood of confusion on the part of the public, which includes a likelihood that they will associate the infringer’s goods or services with you.

That said, anyone who has used the same or similar trade mark before you registered yours will not be prevented from using their mark, and could stop you from using your mark or apply to cancel your registration.

To assert your rights, you can notify the infringer that you have a trade mark registration and request that they stop using their mark – often called a “cease and desist letter”. If the infringer continues to use their mark, you may be able to issue a court claim to stop them and could potentially claim damages from them.  However, legal advice should be sought before writing to the infringer, as they could claim that you have made an unjustified threat and seek damages from you!

What impact is Brexit likely to have on my trade mark portfolio?

Although much is still under discussion and to be decided, it is looking like the end of the EUTM for the UK when Brexit happens.  As it currently stands, any new EUTMs will cease to have any effect in the UK when the UK leaves the EU.  This means companies who want protection within the UK will have to apply for a separate UK trade mark registration to ensure their brand is fully protected within the UK market. A EUTM will no longer offer that protection.

There are ongoing discussions as to how to deal with existing EUTM registrations when the UK leaves the EU.  It is thought that existing registrations will either be automatically transferred on to the UK register for the remainder of the term of that trade mark, or there will be an opt-in system to the UK registration system for an additional fee.  Watch this space.

Seek advice!

The law of trade marks is a complicated area and it is so important to choose the right mark at the outset – one that no one else is using and one that meets the requirements for registration – and get it registered.  It is a timely and costly exercise to rebrand if you later discover that someone has prior rights to the mark.  If that someone takes you to court and claims damages from you, it could be very expensive.

How we can help…

Peacock & Co can advise you as to whether a proposed mark is registrable as a trade mark, and carry out searches of the registers to check whether the mark is available for registration.  We can also manage the trade mark registration process from preparation and submission of the application right through to final registration and receipt of your trade mark certificate.

Please get in touch with our Intellectual Property solicitor, Clare Veal if you would like any further information on trade marks and branding issues.

This article was written by Clare Veal

Please note the contents contained in this article are for general guidance only and reflection the position at time of posting. Legal advice should be sought before taking action in relation to specific matters.

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