Registering a Trade Mark
What can I register as a trade mark?
The most commonly registered marks are figurative marks, for example brand logos or specific product logos, as well as words for a brand name or slogan.
You can however register assets such as sounds, music and even colours (think Coca Cola red!) – these are generally much less common and any decision to register such assets will depend on how valuable they are to your brand, considering their distinctiveness.
Why should I register my asset?
- Exclusivity. Registering your trade mark gives you the exclusive right to use the mark for the goods and/or services in which it has been filed. Unlike other intellectual property rights, this right can last indefinitely provided it is maintained through renewal.
- Legal protection. Registered protection allows you to enforce your rights to the mark and take action against any third party infringing your rights, for example if they re-produce and copy the mark without your consent. Taking action for trade mark infringement is much more straightforward than relying on a ‘passing off’ claim if the mark is unregistered.
- Brand reputation. Having the ability to take action in cases of infringement helps protect the reputation and image of your brand – with the increase of social media hosted e-commerce and online counterfeiting, maintaining your brand reputation is key. One of the first questions asked by a social media platform on any takedown process is evidence of a registered trade mark.
- Commercial exploitation. You can make money from your brand through licensing your registered rights in exchange for royalties – either exclusively or to a number of licensees who promote your brand and/or product further.
- Financial value. Valuing your brand can be difficult. A brand that has registered protection in a range of jurisdictions across the world will be perceived as having greater value than one without such protection and will be more attractive to investors than one that does not.
What do I need to consider before registering my trade mark?
- Distinctiveness of the mark. Your mark needs to be distinctive and unique to your brand and the products and/or services you offer. What this means will depend on the type of mark you are looking to register, for example a descriptive slogan may still be registered if it is stylised in a certain way and leaves a unique visual impression. However the text itself would not be afforded protection as a word mark if descriptive and indicative of the products and/or services you offer.
- Is your mark taken, or is it the same or similar to another registered trade mark? Searches of the UK and/or EU trade mark registers should be undertaken to determine whether there are existing marks which are similar or the same. If there are, you may still be able to register but you would need to contact the owner of the earlier trade mark.
- Does your mark meet the relevant criteria? There are certain ‘absolute grounds’ that can prevent marks from being registered, for example if the mark contains offensive language, is too descriptive or is unacceptable for policy reasons.
What products and/or services the mark represents. The trade mark will be filed and, if successful, registered in ‘class’ categories which you must choose beforehand based on your business offering – for example clothing, alcoholic beverages, foods, etc. It is advised you consider realistic future offerings when making applications.
What does the application process look like and how can Beyond support?
Trade mark applications are filed with the UK Intellectual Property Office (UKIPO) for legal protection in the UK.
You can apply to register your trade mark online or paper application. Applications cost £170 for one class and an additional £50 for each additional class.
Upon filing the application, it is reviewed by an examiner at the UKIPO to ensure it meets the legal requirements and to flag any existing registered marks which may conflict with the mark applied for. Provided there are no issues raised and no third party oppositions, most applications tend to be registered within 3-4 months of filing.
Obtaining expert advice is recommended to ensure your trade mark is successfully registered – particularly around the following, which our specialist team can support you with:
- Advising on the merits of an application and the proposed mark itself
- Conducting searches on the trade mark register and online
- Dealing with any oppositions filed by a third party, including any negotiation and the possibility of co-existence agreements.
As well as supporting on the above, our team can prepare and file the applications on your behalf and update you on the progress of the applications.
To get in touch with our team to discuss registering your mark and how to protect your brand, please contact [email protected].
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Reach out to Our Expert Team Today
Our expert commercial team strives to go far beyond the average. Our team advises businesses on the risks and opportunities that lie within contracts. Our team of lawyers has worked on intellectual property for years, so you can trust you’re in the right hands.
To chat with one of our lawyers, phone us on 0333 202 6433 or email us at [email protected].