Protecting your intellectual property has become more important than ever before and investment in intellectual property over the last few years has increased significantly. Many businesses are realising the value of their intellectual property and carrying out intellectual property audits and putting intellectual property strategies and policies in place.
A trade mark is a sign or symbol, which can distinguish your organisation or your goods and/or services from those of another e.g. your ‘brand’.
Trade marks can be registered, which provides a tangible record of your asset. Think about the “value” attributed to trade marks such as Virgin, Mercedes, Hilton, IBM and Coca Cola. Even relatively new businesses can quickly establish a strong market position through their trading and trade marks, Google, Amazon, Facebook and Uber contributing huge value to the underlying business.
Here are a few key points to consider when thinking about trade marks.
Trade marks can be words, phrases, slogans, logos or pictures, sounds or jingles, shapes or colours, an aspect of your packaging or a combination of some or all of these. The most effective trade marks are distinctive for the goods or services which they protect and you need to avoid descriptive names.
There are some things you cannot register, for example, anything offensive, protected emblems, flags, anything which describes the goods or services you are selling or providing, 3D shapes which are typical of the goods you are selling, anything which is intended to deceive and anything which is an indicator of origin or which is customary in the relevant line of trade.
Before you decide on a brand name or logo you should run a clearance search to ensure that the name or logo you want is not already registered by someone else. This will reduce the risk of trade mark infringement and will help you determine the registrability of the trade mark. You can do a basic check yourself by using a free online government service but consider carrying out a full clearance search, for which you should seek specialist advice.
If you decide to register a trade mark you will obtain an exclusive right to use the trade mark for the goods and services for which the trade mark is registered. Registering your trade mark may also help in preventing people using your trade mark without your permission and will make it easier for you to take legal action against them if they do. Registering your company name at Companies House or registering a domain name will not protect your trade mark to anywhere near the same extent as a trade mark.
Trade marks are registered by the Intellectual Property Office in the UK and other entities worldwide. The process of registering a trade mark in the UK usually takes about 3 months, but can take longer if your application is opposed by someone else.
Trade marks are territorial in nature, meaning that you are only protected in the territory in which you have registered the trade mark. When thinking about registering a trade mark you should look at other territories in which you may want to expand in the future. If you are thinking of operating or selling your goods and services into Europe, you may want to consider registering an EU trade mark (EUTM).
Trade marks must be renewed every 10 years and can theoretically last forever, provided that you pay your renewal fees. However, if you are not using the trade mark, your registration could be taken by someone else.
Remember to keep your registrations up to date, e.g. if your logo has changed slightly over the years make sure you have registered the latest version.
Use the ® symbol and ™ symbol correctly. After you have registered your trade mark you can use the ® symbol. Before you have registered your trade mark you can only use the ™ symbol, but this does not offer any protection. It is a criminal offence to use the ® symbol if you have not registered your trade mark.
If someone else is using your registered trade mark you should consider writing to them and requiring them to stop doing so, but you should investigate fully first and take appropriate legal advice on the best course of action in the specific circumstances.
Remember that a registered trade mark is an asset which adds real value to your business and which you can sell, licence or franchise to someone else. Intellectual property assets can also raise the value of your business in a sale or acquisition.
Above all, take specialist legal advice to ensure that your brand is properly protected. For further information please contact Fiona Moss, a Solicitor in Mundays’ Corporate and Commercial department.