What is a Trade Mark?

Most people have heard of Trade Marks. However, they often do not know what a Trade Mark is and how best to protect their Trade Marks.

A Trade Mark is a sign which distinguishes one business from another business. Moreover, Trade Marks allow customers to identify, recognise and recommend particular goods and/or services associated with a business.

You can own as many Trade Marks as you like. For instance, a possible marketing strategy is to use your primary mark (usually your company name) together with secondary marks for each of your key products. You may also have a logo or a number of logos associated with your business.

Trade Marks can quickly become valuable assets, often generating business simply through the reputation of the mark. In fact, Trade Marks are items of property which can be assigned, sold and licensed just like any physical property can.

Trade Mark Registrations

Whilst it is not compulsory to register a Trade Mark, there are many commercial and legal benefits in doing so. Some of the advantages are:

• A registered Trade Mark acts as a notice to third parties and could deter competitors from adopting identical or similar Trade Marks.
• It is generally easier and cheaper to enforce registered Trade Mark rights than it is to rely upon unregistered rights.
• You can add ® to your Trade Mark to further distinguish your business, product and/or service.
• Your business will likely have a stronger negotiating position in disputes and business negotiations.
• You can exploit your registered Trade Mark through licensing to receive royalties.
• You can sell Trade Marks with or without your business.

The more successful you become, the more of a reputation your business, your products and/or your services tend to have. A registered Trade Mark may help to protect this reputation. If you do not adequately protect your Trade Marks early on, problems may arise in the future.

Before adopting a Trade Mark, it is advisable to conduct Trade Mark searches. Trade Mark searching serves a dual purpose: assessing both the infringement risks and the chances of successfully registering a Trade Mark. Searching for Trade Marks identical/similar to the mark you hope to use/protect is a low-cost process compared to the financial risks of a later conflict. There are various searches which can be carried out, from an identical Trade Mark check (an initial check looking for identical marks covering identical goods and services only) through to a full Trade Mark search (a comprehensive search looking for identical/similar marks covering identical/similar goods and services). A Trade Mark Attorney will be able to advise further in relation to Trade Mark searches.

Once you are confident that your proposed Trade Mark is free to use, it is advisable to obtain a Trade Mark Registration. Trade Marks are territorial rights. As such, it is advisable to protect your Trade Marks in the countries where they are going to be used. Trade Mark applications can be filed in the United Kingdom, the European Union and throughout the rest of the world.

A Trade Mark application must designate the goods and services for which protection is required. It is good practice to not only list the current goods and services you offer, but also future goods and services you intend to offer under your Trade Mark. It is not always straightforward to identify an accurate list of goods and services in accordance with the Trade Mark classification system. However, a Trade Mark Attorney can assist with this process to avoid getting this wrong. An inaccurate or vague list of goods/services could potentially result in a Trade Mark registration with little or no commercial value to your business.

Post-Registration

Once registered, and only once registered, you can start using the ® symbol alongside your registered Trade Mark. This can be a strong deterrent to potential infringers. Please note that it is a criminal offence to use the ® symbol next to an unregistered Trade Mark. As such, you should ensure you use the ^TM symbol next to unregistered Trade Marks.

Unlike other Intellectual Property rights, Trade Mark Registrations can last indefinitely upon payment of renewal fees. The initial investment into the registration of your Trade Mark should therefore be considered as a long-term investment. In most countries, including the UK, renewal fees are payable every 10 years to maintain the Trade Mark registration.

In order to avoid your Trade Mark Registration becoming vulnerable to cancellation by a third party, it is important to visibly use your Trade Mark in relation to all goods and services covered by your Trade Mark Registration.

Remember…

• Carry out some initial searching to explore possible Trade Marks.
• Consider seeking professional advice from a Trade Mark Attorney before committing to a Trade Mark Registration since this is a long-term investment.
• Only use the ® symbol once you have a valid Trade Mark Registration in place.
• “Use it or Lose it” – keep using your Trade Mark as its corresponding registration may otherwise become vulnerable to a cancellation action by a competitor.

If you have an accountant, they should be your first stop for business advice. If you don’t have an accountant or they can’t help, BuBul has a wide range of experts available. For more advice on trade marks, contact our expert* Rachel on LinkedIn.

*We’ve picked experts we know and trust who are good at what they do. All of them will give you at least an extra 30 minutes free advice if you contact them and would then charge their normal prices. They don’t pay to be on BuBul and don’t give us any money from anything they earn as an expert.