A limited company is by definition limited in its risk. Its legal status separates the business from its owner’s personal assets. So for a limited company not to trade mark its company name and brand is to increase business risks that could be avoided relatively easily and cheaply.
Consumers rely on and trust brands and brand loyalty is an essential component of most companies’ strategy.
Operating without a trade mark is leaving a business open to the threat of possible counterfeiting; a rogue trader using a similar URL and deflecting online traffic to this site; or selling similar goods under a confusingly similar name.
if you do not trade mark your brand and someone else does – its normally first to file, not first to use who wins – or by not trade marking you build a brand that infringes someone’s registered rights and that investment is then lost when you have to change your name and branding.
We’ve compiled our 12 essential facts (a nod to Christmas!) on trade marks to give you all the information you need to make an informed decision:
What is a trade mark?
The official definition from the Intellectual Property Office is that a trade mark “is a sign which can distinguish your goods and services from those of your competitors (you may refer to your trade mark as your “brand”). It can be for example words, logos or a combination of both”.
Why should I trade mark?
A trade mark provides a business with the exclusive right to use the mark for the goods and/or services that it covers in the United Kingdom (UK) or in the EU with a Community wide trade mark.
With a trade mark comes the full weight of the law ensuring that a company can stop anyone using or abusing its brand, e.g., Trading Standards Officers or Police are able to bring criminal charges against counterfeiters. Taking legal action, without a trade mark, against another company is a much more difficult process normally involving the law of passing off which is a High Court action with costs in excess of £100k and little chance of recovering these from the other side. In contrast, trade mark actions can be taken in the equivalent of the Small Claims Court for under £5k.
Why would happen if a company were trading using a name that was already trade marked?
If a trade marked company felt you were infringing its brand it would have the power to stop you trading. A rebrand would then be necessary which can be devastating for a company, financially and in terms of losing customer loyalty.
A rebrand generally involves a new name, a new logo and stationery, with incurred design costs, plus the loss of business during this time as well as having to build up new customer allegiance once more.
Where do I register a trade mark?
Trade marks must be registered with The Intellectual Property Office, not Companies House. It’s certainly true that Companies House won’t let two companies register two identical names but this has no relevance to intellectual property protection.
Does owning a website domain name give a company trade mark protection?
Unfortunately owning a website domain address also offers no legal protection. Indeed before you name your company it’s worth checking the trade mark and the domain name is available.
How do I find out if the trade mark and domain name are available?
Do your searches from the outset. It’s possible to search The Intellectual Property Office’s database for existing trade marks but you must consider aural, visual and conceptual similarity, being one letter or number different is not enough. Visit its website at www.ipo.gov.uk.
It’s also possible to search the Nominet UK registry for all domain names ending in .uk.
Also don’t forget to check that it’s available for use at Companies House.
Can two companies have the same trade mark?
A system of classes operates so if the trade mark has been taken in one class, it may be possible to still register it if your products or services are different.
How long does a trade mark last?
A trade mark lasts for ten years with the right to renew thereafter. It can cost as little as £470.
How do I choose a name?
A made-up name is probably the most straight forward way to achieve a successful trade mark application. You only have to think about all the strange car names that exist and grocery products, for example ‘Pringles’ which has created a very successful brand out of an invented name.
However failing a creative epiphany, the advice is not to be too descriptive with your company or product name. For example ‘Delicious Cakes’ or ‘Excellent Computer Service’ will never get past the examiner.
How do I trade mark outside of the UK?
You can also protect your name throughout all of the Member States of the European Union, called a Community Trade Mark, with just one application.
Registering a trade mark in a country outside the EU is also not an overly complex or costly process (for China the majority filed by Trade Mark Direct are from £400 – £800).
An Investment in Your Company’s Future
A recognisable and defendable brand is an asset to a business and can be included on a company’s balance sheet. To franchise or license a business, a trade mark is an absolute necessity as it would also be if the business were for sale.
What is the trade mark symbol?
Once a company is registered, it is possible to use the ® symbol next to it. It is an offence to use this symbol for a trade mark that is not registered.
Whilst your name and logo are unregistered, you can put the TM symbol for an unregistered trade mark next to them. You can also use the copyright, C, symbol next to your logo.
This guide was written by Mark Kingsley-Williams, Director of Trade Mark Direct.