How to register a trademark and protect it
If you already run or plan to start your own business you need to protect your brand as a form of intellectual property. Protecting your brand will not only strengthen the value of your business but it also prevents competitors from using or even registering a similar brand.
Copyright, patents, design and trademarks are methods of protecting intellectual property and in this article we will discuss how you can protect your brand from misuse by securing a trademark.
Why should you protect your brand?
Every company has a brand and your clients or customers will associate the quality of the services or products you supply with your brand. Without protecting your brand you are leaving your business exposed. For example, a competitor could legally promote their company using your branding. Imagine if Coca Cola didn’t have their brand protected by a trademark, there would be huge confusion with fizzy drink products and the use of the brand by other fizzy drink suppliers would have a negative effect on Coca Cola’s sales.
Additionally, not registering a trademark could also have a negative impact on the value of a business and can often be a deal breaker during investment negotiations. Trademarks ensure that businesses can be uniquely identified and ensures a business cannot be imitated by competitors.
What can be protected by a trademark?
Before you begin the trademark application process you must be certain that what you are submitting for trademark protection is unique. You can trademark words, sounds, logos, colours or a combination of these but you cannot trademark anything...
- that is offensive
- that describes or relates directly to the product or services you provide
- that is misleading
- that uses graphics that relate directly to the products or services you provide such as the shape of a football for marketing footballs
- that isn’t distinctive or closely resembles state symbols like flags or hallmarks
Applying for a trademark
Before applying for a trademark it is recommended that you search existing registered trademarks to check to see if a similar brand is already protected by a trademark, and if there is you can find out who owns it. You will be able to search the trademark database by using keywords, phrases, images and unique numbers assigned to trademarks by owners. If during your search you find that a similar or identical trademark already exists it could be worthwhile contacting the owner and asking for their permission to register yours. If they are open to allowing you to register your trademark you must request a letter of consent from them which you should submit alongside your trademark application.
Most businesses will want to register their trademark in the country the company is based. If the business is based in London then the company will most likely want to secure a UK trademark. However, it is possible to register trademarks in Europe and other worldwide jurisdictions depending on the amount of protection you require. Furthermore, it is also important that the trademark is registered in the correct classes for the services or products the company provides.
To cover every single service or product, there are 45 recognised trademark classes which are regularly amended. Making the classification of a trademark can be an incredibly complicated part of the process. There are 34 classes dedicated to products and 11 for services. These classes cover a range of products or services that are deemed to be in the same areas of trade. For example, Class 1 covers “Chemicals used in industry, science and photography as well as in agriculture, horticulture and forestry” which includes products such as chemicals for preserving foods, industry adhesives and manures. So a wide range of products can be listed under one class and details of each class can be found on the government website. Furthermore, some of the classes do relate to each other and crossover between the classes is not uncommon. To ensure the most comprehensive trademark security it is important that your trademark is registered for the main classes as well any potential cross classes.
There are many complex aspects to securing a trademark and to ensure you get the best trademark protection it is important you seek professional advice from an experienced intellectual property team.
Benefits of registering a trademark
Fundamentally, it is important that your company’s branding is protected against competition because damage to your brand, your reputation and to business can be caused by unauthorised parties using your branding. Registering your brand as a trademark should prevent others from mimicking your brand and if they do, owning the trademark will allow you to take action towards any unauthorised use. Once registered, the trademark will be protected for 10 years at which point the business will be required to renew the trademarks. Renewals extend the trademark protection for a further 10 years and there is no limit to the amount of times you can renew the trademark.
If you have built your business up with a strong reputation it would be incredibly frustrating to learn that you can no longer use your branding because another company has registered something identical or similar. A situation like this would likely lead to a complete rebrand of your business which is likely to be difficult, expensive and could be a long process as you rebuild the connection between your business and your consumers.
Additionally, once your brand is protected by a trademark the value of the trademark should increase in line with the success of the businesses products or services. Business investors will always want to know if a business has protected itself correctly with an appropriate trademark. Having the right trademark can decrease the level of risk involved and enhance the value of the business.
A business with a registered trademark will be able to take action against any unauthorised use if an identical or similar mark was used during commercial activity where the third party gained monetary value such as in advertising materials.
A mark is deemed identical if it has not been modified at all or if only minor changes have been made that are insignificant to its overall appearance. If an unauthorised use falls into the similar category a number of questions are asked about its use and appearance:
- Are the public likely to be confused by which company produced the product or service?
- Can a clear association be made between the two marks?
Counterfeiting goods is perhaps one of the biggest issues facing the consumer goods sector with fake items still on the rise. Online sales of counterfeit goods have contributed to this and have made spotting fake items more difficult. Without a trademark it would be impossible to prevent counterfeit goods from being sold and owning a trademark will certainly make any preventative steps against counterfeit products easier.
If you wish to apply for a trademark to protect your brand it is recommended that you enlist the services of an experienced solicitor who specialises in trademarks. The intellectual property team at Rollingsons will be able to provide you with advice on securing a trademark for your brand by completing extensive trademark searches. Additionally the team also has experience with the application process for securing trademarks for multiple classes within the UK, Europe and other worldwide jurisdictions. Once your trademark is secured the team can also assist your with the licensing of trademarks, acquiring and assigning trademarks and defending your trademark against any infringement. For more information or to arrange an initial consultation, please contact us on 0207 7611 4848.