Most, if not all, businesses adopt a trade mark to identify the services they provide and/or the products they sell. A trade mark enables your customers to recognize services and/or products that originate from you and the value of a trade mark generally increases over time as goodwill is built up in the mark through advertising and/or sales. A trade mark is often a company’s most valuable intangible asset and, as such, should be protected.
It is a common misconception that registering your company name with Companies House provides you with protection for that name. This is not so. A trade mark registration for your mark provides you with the exclusive right to use the mark for the goods and/or services covered by your registration. Whilst it may be possible to take action against a third party infringer even if your mark is not registered, it is necessary to prove that you have built up a reputation in the mark and you are harmed by a third party’s use of the mark. An action for infringement of a registered trade mark is easier to prove and the existence of a registration is often enough to deter potential infringers from adopting an identical or confusingly similar mark. Furthermore, the possession of a registered trade mark adds value to your company, being a property right that can be sold with the company or traded via a licence or franchise agreement.
A trade mark may be registered if it is distinctive for the goods and services you provide and may comprise, inter alia, a company name, logo, slogan, three-dimensional shape, smell and/or colour. Purely descriptive words for the goods or services will not be registrable, nor will those that have become customary in your field of trade, or are deceptive or offensive.
We will be happy to advise on the suitability of your trade mark for registration.
An application for registration is filed with the Trade Marks Registry providing details of the mark and the goods/services for which you are intending to the use the mark. An official fee is payable. The application is examined to assess whether the mark is acceptable for registration and you are notified of any earlier marks that are the same or similar to your mark and already registered for the same or similar goods/services. A period of time is provided to reply to any objections and comment on any third party marks. The Registry will also notify the owners of the earlier registrations to the existence to your application. The application is then published and subject to a three-month opposition period. If no opposition is filed, the application will proceed to registration. A trade mark registration may remain in force indefinitely, subject to genuine use being made of the mark for the goods/services for which the mark is registered and payment of a renewal fee at 10 yearly intervals.
Trade mark registrations are territorial and it is necessary to apply for registration in each country where protection is required. However, it is possible to obtain an International Registration which may extend to a large number countries and a Community Registration can be obtained for the whole of the European Union.
Prior to adopting a new trade mark, it is important to check for the existence of any earlier trade mark rights to assess whether there is a risk of infringement of these earlier rights. Identical and full availability searches can be carried out to check for such earlier conflicting marks. We also recommend keeping a watch on the Trade Marks Register. This ensures that you are made aware of any third parties applying to register an identical or similar mark to yours, providing you with the opportunity to oppose registration of the conflicting mark and thereby maintain the value in your mark.
We can advise in relation to all trade mark matters, including searching for earlier rights, applying for registration both at home and abroad, and subscribing to a trade mark watching service.
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