What is a trade mark?

A trade mark is a badge of origin. Trade marks allow consumers to distinguish between your goods or services and those of your competitors. Once a trade mark becomes known it also informs consumers about the type and quality of the goods or services you provide.

To perform these functions a trade mark must be distinctive, but it must not describe characteristics of your goods or services.

What is the benefit of having a trade mark registration?

A trade mark registration provides the proprietor with the exclusive right in the trade mark. Those exclusive rights are infringed by use of the trade mark without the consent of the proprietor.

Trade mark rights can be obtained through use, rather than registration. However, it takes time for rights to accrue through use and these rights are harder and more expensive to enforce than registered rights.

In some cases the existence of a trade mark registration may persuade others to select a different mark, so avoiding any problems arising.

Can I get a single worldwide trade mark registration?

No. Generally speaking, the government in each country grants trade mark registrations and you need to apply for protection in each country in which you want protection. There are systems that simplify this process, such as the European Community Trade Mark system, but you still need to take steps to obtain protection in all of the countries in which you have commercial interests.

You will have six months from the date you file your British application to decide whether to pursue protection overseas. Provided your overseas applications are filed within this ‘priority’ period, your overseas applications will be treated as if they were filed on the same date as the British application.

Why should I conduct a search before I file an application?

It is always prudent to conduct searches prior to filing an application or commercially exploiting a trade mark. Intellectual Property is essentially the same as other types of property, and few people would buy a house without having some type of survey conducted. Also, different types of search can be conducted depending on your invention and circumstances.

The searches are intended to answer questions such as:

• Whether your mark is available for registration on the goods or services you want to use it for
• Whether you will be able to use your trade mark without infringing the rights of others

I have registered my company at Companies House. Why do I need a trade mark registration?

The registration of a name at Companies House creates a legal entity (sometimes called ‘person’) entitled to hold property in its own name. It does not provide that legal entity with any right to use their company name as a trade mark.

What are ‘common law’ trade mark rights? Is this the same as ‘passing-off’?

Trade mark rights can be obtained through use, rather than registration. Rights obtained through use are known as ‘common law’ trade mark rights. These common law rights are enforced by taking action for ‘passing off’. It takes time for rights to accrue through use and these rights are harder and more expensive to enforce than registered rights.

How do I apply for a trade mark registration?

A trade mark registration must specify the mark and the goods and services covered by the registration. To advise on searches and the application procedure we need to know the mark that is of interest to you, the goods or services on which you will use the mark, and the name of the person or company who will own the registration.

How long will it take to complete the application process?

It is currently taking about six months between filing a British application and the application achieving registration, provided that no objections are encountered along the way. During this time, the application will be advertised and a three-month period is established to allow third-parties to oppose your application if they believe they have grounds for doing so.

How much will it cost to obtain trade mark protection?

The cost depends on the mark and the range of goods and services you want to register it for. We can advise on the likely cost when we have this information from you.

Once granted, a trade mark registration needs to be used or it will become vulnerable to revocation and it must be renewed every ten years.

Significant additional costs will be incurred if you require protection overseas, but we can advise on these costs when we know the specific countries of interest to you.

When can I use the ® symbol?

It is a criminal offence to use the ® symbol, or otherwise suggest that a trade mark is registered, until the registration process is complete. Therefore, even if you have filed an application you should not use the ® symbol, or otherwise suggest that a trade mark is registered, until a registration has been granted. You can state that a mark is a trade mark, or use the ™ symbol at any time.