A registered trade mark safeguards your brand, giving you the rights to take legal action if someone uses your brand without permission and allow you to sell or license your brand to third parties if necessary.
But as a new or recently growing business – focused on taking your company forward – it’s possible you won’t be aware of what can be registered as a trade mark in the UK.
It’s important to note that if you do obtain a registered trade mark for your brand in the UK the trade mark is only protected in the UK. There are different processes for registering European Union (EU) and international trade marks.
Is your brand eligible to be a registered trade mark?
The Intellectual Property Office outlines what you can and can’t register as a trade mark:
Any new UK trade mark must be unique and can include the following:
A combination of the above
The following content is not eligible for a UK trade mark application:
Offensive content e.g. something containing swear words or inappropriate imagery
A term that directly describe the goods or services it relates to e.g. the word ‘food’ could not be part of a trade mark for a food production company
Misleading terms – the IPO uses the example where the word ‘organic’ is used for goods that aren’t organic
A three-dimensional shape that’s directly associated with your trade mark – the IPO uses the example of where the shape of an egg is used for eggs
A term that’s too generic and non-distinctive e.g. a simple, common statement such as ‘we’re better than the rest’
The World Intellectual Property Organization guidelines state that images that look too similar to state symbols such as flags or hallmarks are also ineligible
How can I found out if my trade mark is already registered?
The last thing you want is to find out that your potential trade mark ticks all of the right boxes but has already been trademarked by someone else.
The IPO’s free database enables you to carry out a UK trade mark search to find out whether a similar trade mark to your brand already exists for the same or similar goods and services and, if it does, who owns the rights to that particular trade mark.
It’s possible to write to the holder of an existing trade mark to ask for permission to register your own trade mark.
In this scenario you will be required to obtain a ‘letter of consent’ from the existing trade mark holder listed in your UK trade mark search. A letter of consent is the written agreement of the owner of the initial trade mark agreeing to your new registered trade mark.
The IPO states that a letter of consent must include the following at least:
Be written on the company headed paper of the owner of the initial trade mark
State the application number of your proposed trade mark for which consent is given
Agree to the registration of your proposed trade mark, not only its use
Be signed by a responsible person within the company
State that person’s name and position within the company
Note: Owners of earlier trade marks are not duty bound to give their consent. However, it’s not a good idea to file a trade mark application without knowing if you’re potentially infringing someone else’s registered trade mark. Your application would no doubt be brought to their attention, resulting in potential legal action against you.
How long does a UK trade mark application take?
The entire registration process of a new UK trade mark takes around four months on the proviso that no-one objects.
The IPO states that after your application to register a trade mark you’ll receive feedback – known as an examination report – within 20 days. From the date you receive your examination report you’ll have a further two months to respond and resolve any objections.
The IPO will notify you if someone opposes your trade mark application. At this juncture you then have three options:
Withdraw your application
Liaise with the person opposing the application
Defend your application
Note: It’s also possible that your trade mark is registered but opposed at a later date by someone with an earlier trade mark or right. This may be because someone with an earlier trade mark was happy to wait and see where and for which goods or services your new trade mark was being used for before deciding whether to take action. However – if your new trade mark is used in the UK market for five continuous years the earlier trade mark holder loses the right to make an objection.
If you’re keen to discover whether a trade mark is an available and suitable form of protection, the Business & IP Centre Northamptonshire can help. Our ‘one-to-one intellectual property advice session' is designed to help entrepreneurs, inventors and start-ups alike utilise the free web databases available to make necessary UK trade mark searches and start protecting your ideas and products.
This article first appeared on the British Library BIPC website. Click here to view.