1. What can I do to protect my business’s brand?
A well-defined brand enables your business to protect its reputation and goodwill from competitors and inspire brand loyalty amongst customers. When we talk about a ‘brand’, for most businesses, this will include its name and perhaps a logo.
Names (words) and logos (which can include stylised words/words in a particular font and/or colour or a logo which includes text and graphics) can be protected by registration with the UK Intellectual Property office (UKIPO) as a trade mark. This guide focuses on UK trade marks but if you intend to trade overseas, it would also be worth thinking about trade mark registrations in the other countries within which you do business, for example Europe, the US or China. Each territory has its own registries and systems for registration.
Applications for marks in various territories at the same time can be made via the World Intellectual Property Office (WIPO) but you need to have the mark registered in one territory already to use as the basis for your international application.
2. When should I take these steps?
Ideally you should apply to protect your brand as a trade mark before you start to market the business and others become aware of your brand. This can prevent someone else registering a name or logo the same as or similar to yours before you get the chance to do so, either coincidentally or maliciously.
Before spending time and money on marketing a brand you should do your due diligence and check there is not another business out there with the same or a similar name/logo/brand. This can prevent you getting into a dispute over your use of the brand after you have made financial investment in branding and started to build a reputation in the brand.
We can carry out clearance searches at the relevant Intellectual Property Office before making trade mark applications to enable us to advise you of already existing marks or applications which we feel may be too similar to the mark you intend to apply for.
3. How do I apply for a trade mark?
In the UK, trade mark applications can be made online to the UKIPO. However, before applying for a trade mark you need to consider what goods or services you want the trade mark to protect. This is because trade marks are registered in respect of specific classes for goods (such as ‘clothing’, ‘cosmetics’, ‘machinery’ ‘pharmaceuticals’) or services (such as ‘advertising’, ‘education’, ‘financial services’ or ‘accommodation.’)
Within those classes, you need to further specify the goods and/or services you wish to protect. So for example if you are applying for a trade mark in class 36 for financial services you would need to specify the services you intend to supply for example, ‘insurance services’ and ‘brokerage’. This is because two businesses could have trade marks which are the same or very similar but which coexist because they cover very different things.
The classifications and specifications are a very important part of trade mark applications and the part of the process you are most likely to require professional assistance with. If you require assistance with an application we would be happy to advise you or make the application on your behalf.
4. What will it cost?
Trade mark application fees payable to the UKIPO start from £170 with an additional £50 payable per class to be covered by your trade mark. We would be happy to discuss our fees with you if you would like us to apply for a trade mark on your behalf.
5. What do I need after my trade mark has been registered?
Once you have a registered trade mark you need to ensure you are aware of its expiry date. UK trade marks are registered for 10 years from the filing date and will expire after 10 years. You will be able to renew your trade mark from 6 months before the expiry date. You can also renew up to 6 months after the expiry date within a grace period but the fees you will pay to the UKIPO for renewal will be more than you would pay before the expiry date. If you belatedly realise a trade mark renewal has been missed, so long as you are within the 6 month period following the end of the grace period (i.e. it has been more than 6 months but less than 12 months since the mark expired) you can apply to restore the mark to the register. You will however need to show good reason for not renewing within the term or the grace period.
If it is more than 12 months since the expiry date of the mark you will need to file an application for a new trade mark.
You should also actively manage your trade mark by taking action against third parties who you become aware are using a name or logo similar to your registered trade mark to prevent your brand being diluted or damaged. If a third party makes an application for a trade mark which the UKIPO feels may be similar to your trade mark they should notify you so you have the opportunity to oppose the third party application to prevent it being registered and creating confusion with your mark or damaging your brand/reputation. If we make a trade mark application for you we will remind you ahead of the renewal date. We will also monitor correspondence from the UKIPO in relation to similar applications being made by third parties and advise you when we feel it is an application you should consider opposing.
Would you like to know more?
The lawyers at Thrings have a broad range of sector experience working Intellectual Property services.
You can download a PDF version of this guide.
