What is a trade mark?
A trade mark is a distinctive sign – like a logo or word – that identifies your goods or services. It distinguishes your ‘brand’ from competitors. Trade marks can include shapes, sounds or even smells!
Why should I register my trade mark?
Registering your trade mark makes it easier to take action against third parties using the same or similar marks. It also means that your mark is on a searchable register, which should dissuade others from using it. A registered trade mark becomes your property, which you can sell, licence or franchise.
It is possible to gain ‘common law rights’ on a trade mark simply by using it over time. However, preventing third parties from using your trade mark by formally registering it is generally more straightforward and can save you money in the long run.
What are the requirements for registration in the UK?
- Your mark must be distinctive: it must contain an element that differentiates it from other marks. A highly distinctive mark, for example, might be an invented word or a complex logo.
- Your mark must not be descriptive: it must not describe the goods or services against which it is to be used. For example, a picture of an orange or the word ‘ORANGE’ would generally not be acceptable trade marks when used in relation to orange juice.
Other factors will also be taken into consideration by the UK Intellectual Property Office when assessing your application. Please contact any of our trade mark attorneys for advice on the suitability of your mark for registration.
How do I register my trade mark in the UK?
In order to help you register a trade mark, we’ll need a copy of your mark and an indication of the goods or services you wish to cover. Please contact one of our trade mark attorneys at firstname.lastname@example.org.
How do I register my trade mark outside of the UK?
There are three different routes available if you want to obtain registrations outside of the UK:
National Trade Mark Registrations
You can file a national application to register a trade mark in another country. This registration will only provide protection in that particular country, and requirements and procedures vary outside of the UK.
We can help you file an application anywhere in the world thanks to strong relationships with overseas attorneys.
European Union Trade Mark Registrations
A European Union Trade Mark (EUTM) registration is a quick and cost effective way of protecting your trade mark in all 28 countries of the EU:
Austria, Belgium, Bulgaria, Netherlands, Luxembourg, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Malta, Poland, Portugal, Romania, Slovak Republic, Slovenia, Spain, Sweden, United Kingdom.
This single application procedure saves you time and money. As a EUTM is protected in all these countries, it is dependent on the trade mark being available in all these countries. A national trade mark registration in Hungary that conflicts with a EUTM is enough to block use and registration of a EUTM.
International Trade Mark Registrations
It’s not possible to file one single ‘worldwide’ application to register a trade mark in every country of the world. There is, however, an international trade mark system (sometimes called the Madrid system) which can help when registering a trade mark overseas. It’s often the most cost effective route, especially if you want to protect a mark in several countries.
The registration route that’s right for you will depend on various factors, including the number of countries you are looking to file in. Please contact our trade mark team for advice.
What are the requirements for registering a trade mark in the US?
A national Federal US trade mark registration has effect throughout the territory of the United States of America, Guam, Panama Canal Zone, the US Virgin Islands and the Northern Mariana Islands.
A US trade mark application must be based on actual or intended use of a mark in the United States, and an application based on intended use won’t be granted registration until there is actual use.
It is also possible to base US applications on applications or registrations in certain non-US countries. How you file your US application will depend on your circumstances. Please contact any of our trade mark team for further advice.
What are the requirements for registering a trade mark in Canada?
Canadian trade mark application must be based on actual or intended use of the mark in Canada. Depending on the circumstances, it may be possible to base a Canadian application on use or registration in another country. Please contact us for advice on the best way to proceed in Canada.
How do I know my trade mark is available to be registered?
Before you file an application to register a trade mark, it’s always wise to conduct searches of existing trade mark registrations and pending applications to ensure yours is available. We can arrange this search for you.
Is there anything I need to do once my registration is granted?
Trade mark registrations are granted for a limited time period (generally ten years but this can vary by country). You’ll need to renew your registration to keep it valid.
Change Of Name Or Address
If your details, for example name or address, change, the new details should be recorded against the trade mark registration as soon as possible. In some countries, failure to record a change can cause problems when relying on a trade mark registration for other matters.
If a trade mark registration is assigned (sold) to another person or company, the details of the new owner should be recorded against the trade mark registration(s), even if that person or company is related to the original trade mark owner. In some countries, a delay in doing this can cause problems.
Most countries require a trade mark registration to be used within a certain time and to not be subject to an uninterrupted period of non-use in order to maintain its validity. Once a trade mark is registered, we recommend frequently reviewing your registrations and considering whether any new applications are required to take account of developments in your commercial or geographical focus.
What do the symbols ™ and ® mean? When can they be used?
™: this has no legal value in the UK.
®: within the UK this indicates that a trade mark has been registered. It may also appear as the abbreviation RTM. In the UK, it’s against the law to use the ® symbol or RTM abbreviation against a trade mark that has not been registered in the UK or in another territory.
We can assist you in all aspects of trade mark protection and enforcement. If you have any questions please contact a member of our team or contact us at email@example.com.