Trade marks

Trade marks are tools for protecting the reputation and goodwill of a brand. They enable your customers to recognise your products and services.

Any sign that is unique to your business, and which the public perceives as a trade mark is capable of acting as a mark to distinguish your business from that of competitors. Examples of what could be registered as trade marks include:

It is good practice to have a search before using a mark, to avoid using a mark that someone else has trade marked. If you happen to choose a mark that is too similar to a competitor’s trade mark, you may fail to secure a registration of it for your business. Also, you risk having to find a new mark for your business, if the owner of the trade mark finds out about your use of the similar mark. This could happen at any time - years after you start - and applies even if you have built up a reputation in the mark.

Is it necessary to register a trade mark?

Although it is not necessary to register a trade mark to use a name, the danger in not doing so is that someone else registers the name first. This risk is particularly great if you have chosen a desirable, inventive name. By registering a trade mark straight away, your competitors will know you have a better right to the name when they come to choose a name. Conflicts that otherwise arise when two businesses later discover they are using the same or similar names, are less likely to happen.

A registered trade mark give you an exclusive right to use the mark for the goods and services for which it is registered. You can prevent a competitor from using an identical or similar mark.

Use of ™ and ® symbols

If you choose a name that is capable of registration as a trade mark, you could put the ™ symbol beside your name to indicate that you claim unregistered trade mark rights. Later when you have registered your mark, you can put others on notice that you have a registered trade mark by adding the ® symbol next to your name, or using the letters RTM.

Registered and unregistered trade marks - differences

One of the main differences between a registered and unregistered trade mark is that to take action against someone who is using your unregistered trade mark, it is necessary to bring a passing off claim. This may involve establishing that a misrepresentation has been made in the course of trade to a prospective customer or ultimate consumer, which is likely to injure your goodwill or business and which causes actual damage to you.

With a registered trade mark, it is easier to enforce your rights. You tend not to need to establish that the public has been confused by the competitor’s use. Suing for passing off tends to be more complex and more expensive than suing for trade mark infringement.

In many countries the right to a trade mark is primarily given by registration rather than by being the first user. So if you are using an unregistered mark in such a country, a registration for that mark by a third party may well stop you from continuing to use the mark in that country.

As a rule the registered trade mark owner (anywhere in the world) is in a stronger position in the event of a dispute over the right to use a corresponding domain name. So, think carefully about your business name.

If you are not ready to register a trade mark straight away, consider using a Watch Service initially to ensure you hear about anyone else who might apply to register your chosen name.

If you have particular questions about trade marks please visit trade mark FAQs.

We provide a full global trade mark clearance, advisory and filing service. Our objective is to create, maintain, and enhance your brand value. Please visit our quote page for information on fees and filing.