Do I need to register my brand as a trade mark in order to get protection?

In most countries trade mark registration is the quickest and cheapest way to ensure legal exclusivity for the use of your name. In the UK you can get “common law” rights just by using a name in trade BUT (i) it takes a long time to acquire the rights (ii) the scope of the rights is usually unclear (iii) it does not stop someone else using or registering your name and (iv) it is usually prohibitively expensive to stop someone else stealing your name. So yes you should always register your business names and brands as trademarks.

I have registered my name as a domain name. Do I need to register it as a trade mark as well?

Yes. Most definitely. The domain name will not stop a competitor using your name as a trade mark. In fact, if someone else registers your name as a trade mark before you do, they can sometimes stop you using your domain name and make you transfer it to them.

I have registered my name as a company name. Do I need to register it as a trade mark as well?

Yes. Your company registration at Companies House will not stop a competitor using your name as a trade mark or trying to register your name as their own trade mark. All that the registration at Companies House does is stop some one registering another company with exactly the same name. If they change the name slightly they can register another company with an almost identical name. They can also try to use your name as their trade mark unless you get a trade mark registration.

Where do I need to register my trade mark?

If you are conducting a business in the UK you should file a trade mark application at the UK Patent Office in the registration Classes that correspond to your business.

If you want to stop someone else using your name in any other part of the European Union you should consider a Community Trade Mark (CTM) application at the Community Trade Mark office. One CTM application triggers separate applications in each member state of the European Union.

This is a good idea given the free movement of goods and within the EU. It stops potential competitors using your name in other parts of the EU and it means that you are protected if you sell or expand into the EU countries. You should also look to protect your name in your main markets internationally subject of course to cost considerations. However, since October 2004, it is possible to cover up to 172 countries by filing one application under the Madrid Protocol.

What can I register as a trade mark?

Any available name can be registered as a trade mark for a product or for a service if it complies with the legal requirements. Slogans, strap-lines, buy-lines, logos, designs, even shapes, colours and smells can be registered as trade marks.

Is any name protectable as a trade mark?

No. The Trade Marks legislation lays down very technical and specific criteria which the various Registries apply when deciding whether to accept any given name or brand for registration. Marks which are too descriptive or which are not capable of distinguishing your business from other similar businesses may not be accepted. Geographical names are also difficult to register. Obviously, if your name is already registered by someone else you will not be able to use or register it for the same kind of business.

If I have registered my name for one kind of product or service can someone else register it for a different kind of product or service?

Yes, in principle. This is why, when you file your own application, you should file in as many different Classes as are necessary to cover all the different products or services you currently provide or which you intend to provide. A manufacturer of various different products should make sure that all such products are covered by claiming protection in the appropriate Class.

How long does a UK trade mark registration last?

It lasts 10 years and can be renewed for further period of 10 years. If you do not pay your renewal fee by the next renewal date, your mark will expire. However, you are allowed an extra six months from the renewal date in which to renew your registration, but you will have to pay a fee for late renewal. Following this six-month period, there is a further six-month period, i.e. a total of up to one year after the renewal date, in which you may apply to restore your mark.

How long will a UK trade mark application take to process?

About 6 to 9 months depending on various factors. Sometimes it can be longer if there are objections from the Registry or from third parties to be overcome. Importantly, protection will back-date to the date of your application and anyone who has been using your name illegally since that date will have been infringing your rights and may be liable to you in damages.

Can I stop someone using my name as a domain name if I have already registered the name a trade mark?

You may well be able to stop them if they are trading in the same area of business and particularly if you can show that they are acting in bad faith. Otherwise you may have to go through one of the accredited domain name dispute resolution routes offered by Nominet and by WIPO.

Can I get a refund if my application is turned down?

No. Our fee and the Registry fee covers the cost of the processing and examination of your application.

Can I sell my registered trade mark?

Yes. A trade mark is legally described as "intellectual property". It is similar to other property you may own. It may become very valuable indeed and you can sell it if you want. We can advise you on the legal requirements.

Am I breaking the law by using "TM" on my trade mark?

No, as this does not indicate that your trade mark is actually registered, only that it is being used in a trade mark sense. You would only be breaking the law (Section 95 of the Trade Marks Act 1994) if you used the registered symbol ® or the abbreviation "RTM".

When and how can I use the ® symbol?

You do not have to identify your trade mark as registered. You can use the ® symbol or the abbreviation "RTM" (for Registered Trade Mark) to show that your trade mark is registered. The ® symbol usually goes after the trade mark, in a smaller type size than the mark itself, and in a raised (superscript) position, but none of this is compulsory. If you do not have the ® symbol available, you can use the abbreviation "RTM".

Once I have a registration, can I add on other goods or services at a later date if my business expands?

No. When you apply you should advise us of the likely future scope of your business so that we can make sure your application adequately covers such extra goods or services. It is not possible to extend a registration to more goods or services after you have applied. A further application will be necessary to cover such extra goods or services.

What do the fees that I pay at the outset include?

The fees you pay at the outset cover our fees for preparing and filing the application and any application fee payable. Not included is the cost of dealing with any Registry correspondence or hearings that may be necessary or dealing with any opposition or other procedure before the Registry or any other legal work required.

Whatever you trade mark question or concern please contact us for a free legal consultation and we will be pleased to provide you with some free guidance.