A beginner’s guide to trade marks

 85% of small firms are failing to keep their ideas secure said a recent survey by the Intellectual Property Office[1].  A business can stand or fall by its name and logo. A good trademark adds to a brand's value, making it stand out from its competitors.

Don’t Delay 

It is essential to protect your brand from day one.  Too many businesses put it off until it is too late and someone else has already registered the company or product name they have been using.  They then have to rebrand and start trading under a new name, which can be a very costly process.

Don’t just register your company or product name with Companies House as this does not give you any trade mark protection, nor does owning the website address.  You need to register your name and logo with the Intellectual Property Office.

The Value of Your Brand Name

Even if your product isn’t an international sensation (yet), the name it is registered under as a trade mark could become incredibly valuable if a competitor wants to use it. 

Do Your Searches

Make sure that there is not a similar name, symbol or phrase already trademarked or in widespread use. To do this, you can search the Intellectual Property Office’s (IPO) database.

This can be time-consuming, but it is essential to ensure that you are not inadvertently taking someone else’s trademark.   DIY searches on the IPO will only bring up direct matches, so are not fool-proof.   Having just one letter or number different is not enough. 

Recently, an Essex restaurant was forced to change its signage after a complaint by Harrods department store, who argued that the signage’s lettering bore too close a resemblance to its own logo. “This could wrongly suggest some association between our organisations,” Harrods argued.  The cost to owner, Nigel Holland, was in the region of £10,000.

This case and the recent case of ‘Dave’, the popular satellite TV station, having to change its name after a counter action by another company already trading as ‘Dave’, highlights the need for anyone applying for a registered trade mark to ensure they conduct proper searches.

The Class System

Two companies can own the same trade mark as long as they are registered for different products. To make sense of what products are similar the trade mark registries operate a system of classes.

Use a Designer with Trade Mark Knowledge

Brand naming is not a random activity – you need to make sure that you are aware of the basics of trade mark law and also use designers who understand trade mark registration to save yourself hundreds or maybe thousands or pounds in the long run.

Make Up a Name!

One of the easiest ways to achieve a successful trade mark application is to use a made-up name, i.e., Viagra, Prius and Yakult.

Don’t be too literal or descriptive with your company or product name.  Designer Leather Bags won’t be accepted, nor will misspelt words such as Letha Bagz.   And including famous names or brands are out, for example Penny’s Prada Shop.

Google Ad Words – Watch Your Back!

Make sure that your brand values are not being used for a competitor’s advantage.

An example of this is the current dispute between Interflora and Mark and Spencer (M&S).  M&S has been paying Google to have its flower business promoted every time a consumer searches for ‘Interflora’.  Interflora is now taking this ‘piggy-backing’ action to a European court. 

If your business name is properly trade mark registered you can file a complaint to Google, and this should stop companies using your business name in their advert.  Unfortunately, they are still able to bid on your company name as a keyword. 

Think Ahead

A registered trade mark lasts for ten years before renewal fees are due, and once it’s registered you cannot increase the scope. So if you currently only sell clothing but are harbouring a desire to expand to make-up, then it’s worth applying for that class, otherwise you have to start and fund a second application from scratch.

Protect Your Trade Mark                                                             

The speed at which a brand can be destroyed is breathtaking, so make sure that your brand is properly protected with all the correct trade marks in place.

by Mark Kingsley-Williams, Director of Trade Mark Direct (www.trademarkdirect.co.uk).

Trade Mark Direct (www.trademarkdirect.co.uk) is one of the UK’s leading online trade mark registration company and in the top three of all UK firms by the number of applications filed each month. 


[1] Intellectual Property Office ‘Intellectual Property Awareness Survey of Business’, published 11 March 2011  http://www.ipo.gov.uk/about/press/press-release/press-release-2011/press-release-20110331.htm

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