Whilst you do not have to register a trade mark to be afforded some protection against your competitors copying your brand it is often a better to register any valuable trade marks in order to both deter potential infringers and to enable a trade mark owner to sue for trade mark infringement. In short, it is often much easier to stop a competitor using or copying a registered trade mark or one similar to it.
Registration of a trade mark can also give the owner additional rights where a party with no rights or legitimate interest in the mark registers an identical, or confusingly similar, internet domain name in bad faith. Nominet is UK body with responsibility for .co.uk domain names within the UK and they operate a mediation service as just one dispute resolution procedure benefiting trade marks and domain names.
trade marks are registered in the UK by making an application to the UK Intellectual Property Office.
If a trade mark is to be registered, the owner must be able to represent it graphically on the application form. Sounds, for example, could be represented as notes, or smells as chemical formulae.
Prior to applying to register a trade mark, it is important to carry out a thorough trade mark search to ensure there are no other organisations using the same or similar mark to that which the applicant wishes to register. In order to register a trade mark, the owner has to show that it is distinctive from other marks within the same or similar trades. The application will be advertised publically in order to give others the chance to object if they consider your mark may infringe an earlier trade mark for example.
Brand owners should consider registering their trade marks in every country where the individual marks are used. Alternatively, there are some registries that give protection in more than one country, but through one registration. An example is the European Community Trade Mark Registry, which gives protection throughout the European Union. It is also possible to register under the Madrid Protocol, in order to acquire protection in the many countries worldwide which have signed the treaty.
One common question which arises is “I have the domain name and limited company name, so why do I need to register the trade mark”. There are numerous reasons however much of this centres around the ease of proving infringement. It is also better from a prevention point of view as your registered mark will be publically available on the register.
UK trade marks generally take 6 to 8 months to register (although this can be longer if another party wishes to object to an application). Currently the admin fee starts from £170 for a mark to be registered in one class and is £50 for each additional class. There are currently 45 classes to choose from for registration purposes. Just selecting the right class can be tricky if you are not familiar with them.
Once a trade mark is registered at The Intellectual Property Office, the owner has an exclusive right to use it for the kind of goods and services specified in the registration description. The owner of a registered trade mark is entitled to use the ® symbol to show that the mark is registered and therefore protected. If the trade mark is not registered, the ® symbol cannot be used. If you have an unregistered mark, you can still use the ™ symbol at any time to show the mark is being used as a trade mark.
It is important for a trade mark owner to monitor the trade mark register and market so as to be in a good position comment or object if necessary should a competitor attempt to register a similar mark. There are companies which offer a monitoring service for an annual fee to enable the trade mark owner to remain in a strong position to react as early as possible if necessary.
Trade mark registrations need to be renewed every ten years in the UK.
Trade mark registration can be a technical process which should not be undertaken lightly. Trade mark owners should seek advice from a specialist intellectual property solicitor so as to get the application right first time and to deal with any objections from the IPO or other trade mark owners effectively.
If you have any questions regarding the registration of trade marks then please contact our Sheffield intellectual property solicitors.