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Top trade mark tips for small business owners

October 11, 2011

If you are starting a new business, you shouldn’t underestimate the importance of securing trade mark protection.

Here are some top tips from Trade Mark Direct to help you understand how trade marks work.

  • Your brand / company name is an asset. Protect it.
  • Be warned that registering your company or product name with Companies House does not give you any trade mark protection, nor does it give any rights to use that name.
  • A registered trademark allows you to:

– use the mark on your goods and services; and

– exclude others from using the same or very similar mark on same or related goods and services

  • Trade marks are not costly (from £200) and they last 10 years.
  • A trademark should be “capable of distinguishing” the trademarked goods or services from those of other traders.
  • To see if your trade mark is already in use, you can search the Intellectual Property Office’s (IPO) database at www.ipo.gov.uk/tm/t-find/t-find-text/, although please be warned, this will only bring up direct matches and is not foolproof.
  • You can only use ® if your trade mark is registered. ™ can be used on registered and unregistered trade marks.
  • A registered UK Trade Mark will only give protection within the UK. If you trade outside the UK you should consider international protection.
  • Choose a mark which is not descriptive and not generic. Descriptive marks are usually adjectives, e.g., ‘flawless skin’ for cosmetics and skincare products or ‘UKJOBS’ for an employment agency. A generic mark would tend to be a noun, e.g., ‘Autumn Orange Juice’ for a juice made in the autumn.
  • It must also not be misleading about your goods and services or be seen to deceive or confuse the customer e.g., ‘Persol’ washing powder which is very similar to ‘Persil’ would not be registered as a trademark.
  • When selecting a trade mark the best choice is to go for a made-up (“fanciful” in trademark law lingo) word, e.g., IIKEA for furniture, to Optimel yogurts and car names from the Toyota Avensis and Corolla.
  • Surnames, proper names and words describing goods and services can be registered as a trademark. For example Balfour Beatty construction company uses its founders surnames as its trademark
  • Choose which of the 45 classes you want to register your goods of services in. Two companies can own the same trade mark as long as they are registered for different products.
  • It will probably save you time and money if you take professional advice.