Trademark FAQs
What is a trade mark?
Trade marks are your badge of origin, and serve to identify your goods or services. They are your brand. Without trade marks, it would be impossible to find the products and services we like and to avoid those we don"t.
What can be registered as a trade mark?
Names are the most common form of mark registered, but many other signs are also typically registered such as logos, or slogans. It is also possible to register musical jingles. Your trade mark could also relate to the shape (for example, the coca cola bottle), or a form of packaging. Examples of what could be registered include:
- Company or brand names
- Words
- Domain names
- Logos
- Slogans or taglines
- Music or other sounds
- Packaging
- Colours
- Pictures
- Letters
- Numerals
- Shapes
Why register a trade mark?
A trade mark is the best way of staking your claim to a word or logo. By registering a trade mark straight away for a brand name, you can secure exclusive rights over the name that you have coined for your business, and are in a stronger position to prevent competitors using the same name.
What are trade mark classes?
Trade marks are registered for specific business activities that you engage in or intend to engage in in the foreseeable future. These are described as goods and services and fall into different Trade mark Classes, of which there are 45 in all. Another company will be prevented from registering the same or similar name to yours, for the same or similar goods or services. However, if they are not competing with you they will be allowed to share the same name. For example, POLO is a registered trademark of 3 totally separate businesses, covering non competing business categories of confectionary, clothes and cars. Each class has thousands of descriptions.
What are trade mark territories?
Trade marks are said to be "territorial", meaning that they cover specific countries. So a UK trade mark only protects your brand in the UK. If you plan to trade internationally decide in which Trade mark Territories, your business will trade, and register trade marks in those territories. As the costs quickly mount up the more territories you try to cover, you should initially aim to cover the most important ones commercially.
What are unregistered trade marks?
Unregistered trade mark rights arise over marks as you use them in your business. If someone else is using the same mark when you begin to use yours - a mark that they have not registered as a trade mark - you risk a passing off action by them. If they do not find out about you for a number of years, then depending on the facts - such as how long they had been using their mark before you began to build up rights over the same mark - you may end up in an expensive dispute with an undesirable outcome. The best you could hope for is that each of you would be allowed to continue to have limited rights to the mark within a specific geographical area or similar restriction.
How do unregistered trade marks differ from registered ones?
One of the main differences between registered and unregistered trade marks is that it is generally easier to enforce a registered trade mark. To enforce your rights in an unregistered mark, it is necessary to bring a passing off action. This involves proving that you have a reputation in that mark, and that there has been a misrepresentation in the course of trade to a prospective customer or ultimate consumer, which is likely to injure your goodwill or business. With a registered trade mark, you tend not to need to prove that you have goodwill in the mark. Nor do you need to establish that the public has been confused by the competitor"s use. Therefore, suing for passing off tends to be more complex and more expensive than suing for trade mark infringement.
What names qualify for trade mark registration?
Distinctive names qualify. Any name that is purely descriptive of the product or service you provide will not qualify. Descriptive words are those that your competitors may legitimately want to use to describe or advertise their products and services. If you are in the business of selling apples then the name APPLE would not be capable of acting as a trademark for you, but if you were selling records or computers then APPLE is possible as a trade mark.
The Trade Marks Act 1994 prohibits on "absolute grounds" a trade mark from being registered if it:
- is against public policy or morality,
- is made in bad faith,
- consists of or contains a representation of the Royal Crown or Her Majesty or a national flag,
- consists exclusively of signs or indications which may serve to designate the kind, value, quantity, or purpose of goods or services.
- consists exclusively of the shape of the goods themselves, or which is necessary to give a technical result, or the shape which gives substantial value to the goods.
Your chosen name should avoid falling into one of these categories.
I have formed a company and bought a domain, do I still need to register a trade mark?
There is widespread misunderstanding about the rights you get in a name if you have registered it as a company, or domain name. Many people start up their businesses on the mistaken assumption that they have rights to a name just because they have registered that name as a domain or company name, and do not realise that they are exposing themselves to legal costs and confiscation of the relevant domain or company name if when they buy their domain or company name, a competitor has trade marked the same name or a "confusingly similar" name. The only way to secure exclusive rights to use of a name is through a trade mark registration.
Why do I need a trade mark search?
We advise you have at least a basic search before using a new business or product name, or extending your existing business into new business areas. Trade mark searching is essentially a risk management exercise. The more extensive the searches you do, the fewer the risks, and the fewer surprises you will have during the trade mark registration process. However, the cost of trade mark searches can be expensive. The range of searches we provide are detailed on our search pages. Although it depends on how distinctive a name you have chosen, the type of name itself, your budget, and your business circumstances as to what search is right for you, as a general rule of thumb we recommend a clearance search of the trade mark registers before filing a trade mark application.
What searches do you perform before filing my trade mark application?
We offer a range of searching options, from a basic word search (which is the standard search included as part of our trade mark packages) to common law searches (which may be bought additionally). Depending on the mark you are registering you will also need a logo search, which is an extra search you will need to buy unless you are purchasing one of our trade mark options such as the Economy Logo Option which comes with a free trade mark logo image search.
What is a basic word search?
A basic word search is an exact same name word search of the UK and CTM (European) trademark registers to check whether the same name is already registered as a trade mark. In addition all our trade mark packages include an identical search as part of the basic search. An identical search will reveal both the exact word on its own as well as the word combined with other words. Depending on the name it may be advisable to reduce risks further by having a clearance search too. It is important to appreciate that a search of the CTM registers (or US registers where we are doing a US search for you) only reveal what is on the central EU (or Federal) registers and not what is on the registers of each individual country within the EU (or each individual state within the USA).
What is a clearance search?
The clearance search is an identical search of the UK and CTM (European) trademark registers, which will reveal both the exact word on its own as well as the word combined with other words (that is "similar marks"). Depending on your mark, it also includes a limited search of the most obvious similar sounding names, or words having strong elements in common. The clearance search helps reduce the risk of a failed trademark application, and the danger of choosing a business name that is someone else"s trade mark.
It is important to appreciate that a search of the CTM registers (or US registers where we are doing a US search for you) only reveal what is on the central EU (or Federal) registers and not what is on the registers of each individual country within the EU (or each individual state within the USA).
What might the searches of the register show?
Depending on the search you have, they will show whether your chosen name is already registered as a trade mark, or whether a competing business is using a ‘confusingly similar" name to one that is registered. If you are having a common law search, the search may reveal the existence of other businesses with unregistered rights in the name - that is, those who have not registered a trademark, and will not therefore be picked up by a basic or clearance search. Discovery of businesses with rights to the same brand alerts you to the possibility of an objection to your application once it is advertised for opposition purposes.
Why might my trade mark application be refused?
A trade mark application may fail if there are "absolute" or "relative grounds" for refusing registration, or if it is successfully opposed. Absolute grounds are briefly explained under the question "what can be registered as a trade mark".
If relative grounds exist, then the owners of earlier rights are invited to oppose your application. Relative grounds include where your application is for a trademark that is
- identical to an earlier trade mark, and for identical goods or services.
- identical to an earlier trade mark for similar goods or services
- similar to an earlier trade mark and is to be registered for goods and services that are either identical or similar to those of the earlier trade mark.
These are just some of the principal statutory provisions as to when relative grounds may exist. The essential point to note is that trade mark law is complex and you should take care who you entrust to deal with your application as there are many pitfalls for the unwary.
How likely is it that my chosen name will already be registered by someone else?
As there are a great number of registered marks, it may be difficult to find names that are available. If your business name infringes another"s trade mark, you risk having to find a new name for your business, despite having built up a reputation in the original name. So, always avoid committing to a business name if someone else has a trade mark to use it in an overlapping business area.
Do I have 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. If possible, register a trademark straight away, so that your competitors know you have a better right to the mark 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. Trade mark registration is an investment to protect your brand identity.
Can you register my trade mark in the European Union?
Yes a European trade mark is known as a CTM. The administration of the European trademark is under a body known as the Office of Harmonization in the Internal Market. The information about registering European trade marks is included under our trade mark registration page.
How long do trade marks last for?
Trade marks are valid for 10 years, after which renewal fees are due. If your registration has been in existence for more than 5 years during 5 years of which you have not USED some or all of the classes for which the mark is registered, then your registration is liable to be cancelled for non use.
Does copyright protect my brand name?
No, it is not possible to claim copyright in a name. Exxon tried to stop a group of insurance consultants using the name Exxon, arguing that having invested considerable amounts of money in developing and inventing the name they had copyright in it, and had exclusive rights over the word. However, the court disagreed and said that a mere name is too short to enjoy copyright protection, and in any event there would be too much overlap with trademarks if the law were to give people exclusive rights in a name by granting copyright over names. Only trade mark law can give exclusivity over a name.
What do the ® and TM symbols mean?
You put others on notice that you have a registered trade mark by adding the ® symbol next to your name, or using the letters RTM. But wait till your trade mark registration is completed before you do that. In the meantime the TM symbol can be used to indicate that you are using the name in a trade mark sense - although it does not necessarily mean that your claim is valid. For example, someone else may have better rights over the name.
Can I trade mark names to sell to others in future?
No. You must have a genuine intention to use a mark at the time you file to register it, and also, if a trade mark is not put to genuine use for 5 years it is liable to be cancelled.
If I register a name can I stop others using it?
Yes, but only if they are using it for the same or similar goods and services. Trade marks are registered in the classes in which you do business. If someone else applies to register a trade mark that you could object to on relative grounds (see "why might my trademark application be refused) then you will be notified and have an opportunity to object if you hold a UK trade mark. If you hold a CTM (European trademark) then you should "opt in" to hear about other applications, or use a watch service otherwise you will not have an opportunity to oppose their application.
If I register for only one class, how can I extend the application to other classes?
To register in further classes - there are 45 classes in all - you would need to file a fresh application. So, it is more cost effective to register for classes in which you will be providing goods and services in the foreseeable future.
Will I receive a refund if my application fails?
Once a trade mark is filed, only very limited amendments to it are possible. If the trade mark application is unsuccessful no refunds are given by the government. That is why the best insurance against a failed application is thorough trade mark searching.
What is the difference between a UK trade mark and a CTM?
Trade marks being territorial, they only provide protection in the countries in which you have registered them. A UK mark will protect you in the UK but not in France. On the other hand a CTM covers the whole of the European Union, so that registration will give you protection in the UK, France and 25 other European Union countries.
How long is my application likely to take?
Applications for UK trade marks are currently taking about 6-9 months to process, and CTMs (European) applications are taking 12-18 months.
Why do applications to register trade marks take so long?
Once filed, a UK application is examined by the Registry to decide whether the mark is capable of registration. If it is, then your trade mark is published in the Trade Marks Journal, so that everyone has an opportunity to object if they wish. Assuming no-one objects within three months, the application is granted, and a certificate issued. A CTM application, once filed, undergoes ‘formalities examination". About 9 months after filing, the results of searches conducted by the Community Office, and by the majority of the Member States, for possible conflicting earlier trade marks are sent out to you (if you opt to have the searches done). The searches do not form a bar to registration, but may provide guidance as to whether there are third parties in any Member State who may oppose the application. Acceptance of the application is published for opposition purposes, within 12-15 months of filing, in the CTM Bulletin. There is then a 3 month period during which objections to your application may be made.
What is a CTM?
A CTM is a European trade mark. The application covers the whole European Union. If you do business in the EU, it is worth considering applying for a CTM as it is much more cost effective than making individual applications in each European country of interest. The application is filed with the Office for the Harmonisation in the Internal Market, (OHIM) based in Alicante, Spain. However, even if grounds for refusal of the application exist in just one Member State, the application as a whole will be refused. On the other hand, if no substantial objections are raised, the trade mark proceeds to registration about 18 months after filing, and you have trade mark protection in all 27 countries of the EU.
What is an international trade mark?
A UK or CTM (i.e. European) trade mark registration may form the basis for an application for trade marks in other countries. Such application can be in individual countries, or if your desired countries are members of an international protocol known as Madrid, it can be by a Madrid application. This uses a single application form to name the countries in which you wish to trade. The appropriate payments are then made for your chosen countries, which then have 18 months in which to raise any objections to your application.
There are advantages in registering through the Protocol, in terms of ease of administration, cost savings, and flexibility. The basic fee for the application is in Swiss Francs and additional fees are payable per country, the amount of which varies depending on the countries in which you seek to register your mark. Once you file an application under the Madrid system, if objections are raised on it in some countries that you are unable to overcome, your mark will not be accepted in those countries. However, unlike the CTM, your application will continue to be acceptable in other countries unless there are valid objections in any of those countries too.
The application is through the World Intellectual Property Organisation (WIPO) in Geneva. At the time of writing these countries are members of the Protocol- notable exceptions being Canada, India and South Africa.
Can you help me if I want trade mark protection in the US?
Yes, we file applications both directly in the USA, or if you are also needing protection in a number of Madrid Protocol countries, then via the Madrid Protocol. You should note that the requirements for federal registration enable you to apply for a US trademark in 3 principal ways: (1) an applicant who has already begun using a mark in commerce may file based on that use (a "use" application); (2) an applicant who has not yet used the mark may apply based on a bona fide intention to use the mark in commerce (an "intent-to-use" application). You would have to lawfully use the mark in commerce and submit an allegation of use to the US Trademark Office before the Trademark Office will register the mark and finally; (3) under certain international agreements, an applicant from outside the United States may file in the United States based on an application or registration in another country. So, whether we file on your behalf under the Madrid Protocol, or directly depends on which route seems most appropriate for your particular circumstances.
What happens if anyone objects to my mark?
If either the trade mark registry itself or anyone else raises objections, it is necessary to resolve the challenge by arguing your case. Where a challenge is more significant and is not resolved, then you need to consider whether to proceed. The cost implications may be significant. Losing your case or withdrawing your application may result in your having to pay towards the other person"s costs. Neither these costs, nor your legal costs in challenging an opposition are included in our estimates to register a trademark. Additional budgets would therefore need to be set.
Can I lose my trade mark?
It is possible for third parties to apply to revoke or invalidate a registered trade mark for example, if you have not used the mark for 5 years, or the mark has become generic, or on the ground that it should never have been granted in the first place. Generally, once the trade mark has been on the registers for more than 5 years there is less possiblity of cancellation.
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