What startups and small business owners need to know about Trade Marks

This guide explains exactly what a trade mark is, how you can use one to protect your business and how to go about registering a trade mark for your business;

What is a Trade Mark?

The Trade Mark Act 1994 defines a trade mark as:

‘Any sign which is capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.’

In essence, a trade mark can be anything, which distinguishes products and services from your business from those of other traders, just like a farmer’s branding mark on his cattle.

A trade mark may be a word or combination of words, it may be a logo, it may be shape of your products or their packaging, it may be the colour you use to promote your goods and services, it may be a musical composition used in advertising.

As long your trade mark is capable of distinguishing your business from other traders, does distinguish your business from other traders (either inherently or through use over the years) then your trade mark may act as ‘ a badge of origin’ and is protectable.

How are trade marks protected?

In the United Kingdom, trade marks are protected in two main ways.

A trade mark, or more precisely the goodwill associated with the business conducted under the trade mark, is protected via the common law tort of ‘passing off’.

If you can prove that you have established, via the use of the trade mark, ‘goodwill’ in the business associated with that trade mark, then this goodwill is protectable. Goodwill is essentially a reputation in the mark.

Another trader may ‘pass off’ his goods or services as being yours and misrepresents in some way, either deliberately or innocently, that his goods and services are yours or you are in some way connected to him or you have endorsed his goods and services. As long as you can show that you have or are likely to suffer damage as result of such use, you will have a remedy in passing off.

Trade marks can also be registered to obtain statutory protection under the Trade Marks Act 1994 and related European legislation. A registered trade mark is infringed by the use of the same or similar branding in relation to the same or similar goods and services for which the trade mark is registered.

UK trade marks can be registered at the UK trade marks registry and offer protection for the branding registered within the UK.

Trade marks can also be registered in foreign countries and across the whole of the European Union via a so-called ‘Community Trade Mark’ which is shortly to be renamed the EU Trade Mark. There is also an international system known as ‘the Madrid Protocol’ which can be more cost effective than making individual, national applications in each country where protection is required.

Why should I register a trade mark?

The problem with relying on passing off in the United Kingdom is that you have to first prove that you own goodwill in the business conducted under the trade mark.

Also by definition passing off rights are limited to the particular geographical location within which you trade. If you have only traded in Somerset and you are only known in Somerset, your passing off rights will be limited to Somerset. It is also necessary to demonstrate that you have or will suffer financial loss as a result of the passing off.

By contrast if you register a trade mark, there is a presumption that the trade mark registration is valid. Also, if you register your trade mark as a United Kingdom trade mark registration, your rights will cover the whole of the United Kingdom.

If you register your trade mark as a Community or EU Trade Mark your rights will extend all member states in the European Union, even though you only trade in a limited locality and within one member state at present.

Outside the United Kingdom, rights to trade marks are often only achieved via registering the trade mark. In some countries, the proprietor of a trade mark is deemed to be the ‘first to file’ not the ‘first user’ of the mark. Therefore, it is important to obtain registered protection before someone else does.

In addition, once you have obtained a registered trade mark, each trade mark registry will usually notify you of other similar applications in the same registry and so it is easier to object to other subsequent applications.

Must I register a trade mark?

No, but for the reasons given above it makes good sense to register your trade mark. However, you do not have to register a trade mark to use it. Trade mark registrations are designed to stop others using the mark and are not a prerequisite for your use.

However, it is possible that if you do not register your trade mark, other traders could stop you using your mark at a later date. Also, even if you decide not to register your trade mark, you should conduct a search to determine if others have already registered the same or similar mark and thus could prevent your use of the mark.

What should I do when I have chosen a trade mark?

You should first conduct a search in the country or countries where you are to use the trade mark to determine if any others have registered the same or similar trade mark first and thus could prevent your use of the trade mark.

Then, if the search is clear, you should register the trade mark to help prevent other traders using the trade mark.

How do I register a trade mark?

A trade mark is registered by filing a trade mark application at the trade mark or intellectual property office of the country or countries where you wish to trade.

Trade mark applications usually take three to six months to register. An application may take a number of years if there are complications or objections. Many solicitors as well as qualified trade mark attorneys can file trade mark applications and take the applications through to grant on your behalf.

Trade mark registrations are generally renewable every ten years, but in contrast to registered design and patent protection, trade mark registrations can be maintained indefinitely as long as the renewal fees are paid.

How much does a trade mark application cost?

The cost of registering trade marks varies from country to country.

The cost of a trade mark application also depends on the breath of goods and services covered by it. All goods and services are classified into 45 classes. The more classes covered the higher the cost of filing.

If you wish to protect more than one logo or style of branding, it may be necessary to make multiple applications, which again will increase the cost of filing.

Lastly, the cost of an application may be increased if the trade mark registry or third parties object to or contest your application. Equally, there is usually an opportunity to withdraw from a contested application before further costs are incurred.

Instructing a professional such as solicitor or trade mark attorney will also be more costly than filing an application on your own. However, the advantage of a professionally prepared application is that you may rely upon advice to ensure that the application provides the breadth of protection you require, especially if there are complications.

In the UK, the likely cost to file a straightforward single trade mark application in one class will be several hundred pounds including professional fees and the trade mark office fees.

Renewal costs are usually at a similar level to the costs of filing an application.

For more on intellectual property, and how to protect your business, read;

About the author

This guide has been written for ByteStart by Iain Colville, an intellectual property solicitor with Wright Hassall LLP. He specialises in disputes over the ownership or misuse of intellectual property rights.

More help on legal matters from ByteStart

ByteStart has guides on a whole range of business law issues that startups and small businesses may come across, including;

And these on employment law;

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