Having a trade mark associated with your business differentiates your goods and services from those of your competitors and helps build your reputation while adding value to your business. While it's recommended to register your trade mark, to protect its value, there's a lot to think about even before you reach that stage. You have a blank canvas for your brand, so where do you start?! In this blog, we detail the things you should think about before you settle on your trade mark.
Creating the right look and feel
Reflect on the look and feel you want to develop for your brand. Consider working with a marketing expert to help you develop your ideas around brand and image – they will be able to alert you to any negative connotations that you may be unaware of – for example, if you’re thinking of expanding internationally, they could check whether your proposed branding has any potentially unfavourable implications abroad.
Why register a trade mark?
You will invest a lot of time and money building up your brand and business - if you don’t register your intellectual property (IP) where you can, you’re at risk of a third party exploiting your brand, with very little you can do about it. Having a trade mark registration will enable you to enforce your rights in your trade mark and stop others from using it. Rights do exist in unregistered trade marks, but unregistered rights are typically more difficult to enforce and offer less certainty for the brand owner.
Thinking long term, potential buyers of your business will want to see a strong IP portfolio, with your house in order, to ensure they are not buying a potential problem later down the line. With that in mind, potential buyers could be put off if you don’t have registrations in place.
What can be registered as a trade mark?
Words and symbols are the most commonly registered forms of trade mark, but it is possible to register other forms of trade marks too. Here are some some well-known examples:
Words, including personal names and acronyms, such as ‘RBS’.
Symbols - for example, Lego’s brick.
Colours, such as the specific shade of purple used for ‘Milka’ chocolate.
Slogans, like Nike’s ‘Just Do it’.
Shapes of products or packaging - for example, Toblerone.
Sounds – the voice of the late Professor Stephen Hawking is a registered trade mark.
Motions, such as Vodafone’s speech mark with the words ‘The future is exciting. Ready?’ appearing.
Internet domain names - for example, amazon.com.
Smells - Sumitomo Rubber Industries registered a floral fragrance reminiscent of roses as applied to tyres.
Patterns, like the pattern used on Louis Vuitton’s distinctive brown leather bags.
Gestures or actions, such as Asda’s ‘pocket tap’.
Numerals are permitted, for example ‘Levi 501s’.
Is my company name automatically protected by a trade mark?
It’s a common misconception that company names are protected by a trade mark if the company is registered with Companies House. However, this is not the case - the only way to stop a third party from using an identical or confusingly similar name to your business name is to register it as a trade mark.
Having a company registration with Companies House does not guarantee that the company name will qualify for registration as a trade mark. As such, if you wish to register your company name as a trade mark, consider checking whether the name will be registerable as a trade mark before you register the company with Companies House.
A special mention for domain names
You’ll note that domain names are included in our list of registrable trade marks above. As with company names, simply having a domain name registration does not stop others from being able to use it in another context. Though certain unregistered rights may exist, if your domain name is an integral part of your brand, we’d recommend you consider registering it as a trade mark.
Features of a registerable trade mark
So, what does the Intellectual Property Office (IPO) look for in a registerable trade mark?
The IPO may refuse registration on a number of grounds. Here’s an overview of some of the key points to think about:
The sign must be capable of representation on the register, so that the relevant authorities and the public can clearly understand what you are seeking to protect. In other words, you must be able to record your trade mark in some way, shape or form.
The sign must be capable of distinguishing your goods and services from those of others – it can’t already be registered by someone else.
The trade mark must be distinctive – made-up words make strong trade marks!
Descriptive trade marks are not permitted – the sign must not describe characteristics of the goods or services relating to the mark.
The sign cannot be a name that has become the term customarily used to describe the product – for example, ‘Vaseline’ for petroleum jelly or ‘hoover’ for a vacuum cleaner.
The sign must not consist exclusively of the shape or another characteristic which results from the nature of the goods, or which is necessary to obtain a technical result, or which gives substantial value to the goods. For example, a mineral water bottle would not be registrable.
The mark must not be deceptive, offensive, contrary to public policy or illegal.
The mark must not include protected emblems, or be contrary to laws protecting designations of origin, geographical indications, certain terms for wine and other traditional specialities or plant variety rights.
Marks must not be registered in bad faith – for example, to deliberately stop a third party being able to register a mark.
Your trade mark registration infographic
As you can see, there's plenty to think about when it comes to registering your trade mark. To make things easier, we've collated everything into an infographic to simplify the process. Take a look:
As you can see, there’s a lot to think about when choosing and registering a trade mark. It is worth getting this right at the outset to avoid wasting precious time and money. Discover how our intellectual property lawyers can help.
Receive our insights directly to your inbox by signing up to our newsletter