Trademark registration offers legal protection for you and your business against your brand, company name, product and/services. So it’s important to register your trademark properly to avoid any negative impact on your business and its reputation.
If another business copies your brand such as your products’ packaging or visual identity for instance, then it will hit hard on your core brand. Your brand is a core business asset, essential for building recognition within target markets and for nurturing to maintaining trust and emotional loyalty with our customers. What steps can you take to legally prevent someone from using your brand and leveraging your hard work?
Applying for a trademark should act as a deterrent against your brand identity, product or idea being copied. If you have a valid and effective trademark in place, you could pursue any party who infringes your trademark and there will be penalties. You can sue for compensation, create bad press and in some cases it can lead to the withdrawal of their claim to a particular name, product or logo.
The UK Intellectual Property Office is set up to support companies in the UK with such protection, responsible for managing new trademark registrations, updates to registrations and conflicts between businesses over trademark registrations.
There are stages in applying for a trademark which can incur added complications so it’s best to be safe and take legal advice, to save any issues and extra costs that may arise at a later time. Experienced legal advisers will know from experience what to predict and can spot issues early on, so your application is successful, minimising any possibility of it being contested.
How to apply for trademark registration?
Understanding the definition of a trademark will help to clarify that it’s more than a protecting a logo and it’s about the entire business. this is referred to as “any name, symbol, letter, word or mark adopted and used by a manufacturer or merchant in order to designate specific goods and to distinguish them from those manufactured or sold by others.”
There is so much at stake if your trademark is declined or opposed, so securing a positive outcome with the support of a legal representative will be a safe route to take, given their knowledge of Intellectual Property and working experience.
To apply for registration can take up to 4 months and we are outlining the steps involved in applying for your trademark which are relevant to protecting a company in the UK.
a) Eligibility for Trademark Application
Before you start your application, ensure you meet one of the guidelines for being eligible for a trademark. According to the IPO, your name or branding which you are seeking to protect must:
a) be unique in terms of “words, sound, logos, colour’ in any combination.
b) follow common sense guidelines and business acumen to ensure it’s non offensive and not misleading.
c) have no resemblance to anything defined in the World Intellectual Property Organization’s guidelines which could be for instance flags etc.
d) not be registered. You can search the free trademarks database to check this. https://www.gov.uk/search-for-trademark
However, if your trademark has already been registered, then there is a process to follow whereby you can ask the company to allow you to use it, as some may be willing to licence their trademark.
At this earlier stage, decide if you are submitting a single or series trademark (different variations which may be a logo to support your on-line and off-line business).
b) Submit your application
A trademark can be submitted either online or via the post:
Online – https://trademarks.ipo.gov.uk/ipo-apply,
Paperforms – https://www.gov.uk/government/publications/trade-mark-forms-and-fees/trade-mark-forms-and-fees
You can submit your application yourself or employ an Attorney or Solicitor to manage and submit it on your behalf.
With each application, there are associated costs:
a) Online – £170 then £50 per additional ‘class’
b) Paper – £200 per application then £50 per additional ‘class’
Decide on your class
A class refers to which category you wish to assign your trademark to as part of your application. There are up to 35 Worldwide Intellectual Property classes to choose from which are also referred to as ‘nice classifications’
Example would be good here to illustrate what a class is and what its function is eg different market sector, likely no issue.
For example, if you are selling clothing you would ordinarily want to register under ‘class 35’. If you later decide to sell leather handbags then this will need to be protected separately under ‘class 18’. You can assign your trademark to both ‘class 35’ and ‘class 18’ as part of your initial application.
However, if you only assign it to one class and wish to change it later, there will be an additional £50 charge for the extra class.
This is a crucial decision as your class could also determine if your application will be accepted or not. Some companies have been successful by assigning a different class to a registered trademark which was similar to their application. Other applications have been rejected at the same time by their choices. This demonstrates how complex this can be and legal advice may need to be sought.
Your trademark registration will will last for 10 years, so when making this decision it’s important to consider not only your current requirements though also your longer term plans for your company.
You are able to submit multiple classes together for your trademark which will save on additional classification fees at a later date.
c) Waiting for Acknowledgement
Within 20 days, you will receive a response to your trademark application.
If it’s been rejected then you have a 2 month window to appeal and submit further evidence through a ‘witness statement’.
On the other hand, a positive outcome will lead to your application in the Trade Marks Journal within 2 months during which it’s open for anyone to oppose it. Any opposition will defer your application until it’s been resolved and this can incur costs and possibly lead you to go back to the drawing board to revise your application.
Once your application has been granted, your trademark will be registered and a certificate issued.
What happens if your trademark is not registered, do you have rights?
It is still possible to progress a claim if you feel there has been infringement against your trademark which has not been registered.
A company can apply to the Intellectual Property Enterprise Court (IPEC) for a ‘passing off a claim’ through common law if it follows:
a) Goodwill – affects your brand reputation.
b) Damage – current or future loss.
c) Misrepresentation – potential consumer could be misled or confused.
An example of one company who was successful in a ‘passing off a claim for infringement against their trademark’ was The Saucy Fish Company who contested Aldi’s product. Aldi launched a product similar to a product being sold by The Saucy Fish company.
The Saucy Fish company won the objection on the basis of ‘copycat’ packaging (colour, packaging, and recipe) with the arguments that it affected ‘customer trust and confidence in them’. The result was a high court injunction and Aldi was required to withdraw their similar product.
Examples of companies who have been contested for their trademark and their outcomes:
Use of Logos
Last year Adidas was in a legal dispute with the fashion retailer Forever 21 over their use of Adidas’s ‘three stripes mark’ from their logo. They contested that the fashion retailer had used this to a sports clothing range and suggested it would be perceived as a ‘counterfeit product’, leading to brand confusion with their customers. The dispute resulted in an out of court settlement.
Use of Words
In 2016 a small business called ‘Giraffe and Hobbit’, specialising in the import of wine and non-deli products, applied for a trademark and were opposed by the Middle Earth Enterprises (The Saul Zaentz company) in the USA who own the copyright to elements of the ‘Hobbit’ film.
Giraffe and Hobbit’s brand was based on humour as one owner is small and the other tall, so from their point of view ‘a hobbit’ refers to a short person. Alongside this, they provided Google Analytics evidence to show they were targeting a different audience.
The trademark application was declined for 3 out of the 4 classes they submitted except for one, and ‘Giraffe and Hobbit’ had to pay a contribution of £1,570 towards the American company’s legal costs.
These provide examples of well known companies who have taken risky decisions with their trademark or not been aware of what is involved. By illustrating these and the steps involved in applying for a trademark application, this important decision may need legal support either from the Intellectual Property Office Classification department or a Trade Mark Attorney who has working knowledge and experience in this matter.
Our post focuses on UK protection only, so if you are looking for protection in the EU or internationally, then read about the ‘EU and International Trademarks’ or liaise with a legal representative for detailed advice.
Author
Gill Laing is a qualified Legal Researcher & Analyst with niche specialisms in Law, Tax, Human Resources, Immigration & Employment Law.
Gill is a Multiple Business Owner and the Managing Director of Prof Services - a Marketing Agency for the Professional Services Sector.
