Each month, Girl Tribe Gang leverages our collective voice and empowers our members to upskill each other by exchanging their knowledge in a series of blogs, FB and Instagram Lives.
February 2019 is our #KnowledgeExchange Legal month. In this guest blog, Penina Shepherd, Founder & CEO of Acumen Business Law and member of our Brighton Tribe, highlights what small business owners need to know about Trade Marks.
Here’s what you need to know about Trade Marks
Registering a trade mark is an excellent way to protect your brand and your business and once registered will protect your hard work and reputation for years to come!
Before you submit your application it’s important to ensure that your mark meets the Intellectual Property Office’s requirements for registration and importantly, that a similar mark is not already in existence which might conflict with your mark.
This will give you a practical guide to help you navigate the registration process and to give you helpful tips to consider.
What is a Trade Mark?
A trade mark is a form of intellectual property which, when registered, can help protect you against other people using, stealing or copying the names of your products or brands. To be capable of registration, intellectual property, such as a trade mark, must be unique so that it can be distinguished from other goods or services. In essence, a registered trade mark allows you to convey the message of ‘I made this’ and provide reassurance of the quality of your brand.
An idea alone is not intellectual property; it is the expression of that idea which is protectable. It must be something that you have physically created or expressed, such as a design for a logo.
Once a trade mark has been successfully registered it will last for 10 years and, provided you are still using the mark, it can be renewed indefinitely every 10 years after that point.
What can you register as a Trade Mark?
A trade mark can include any of the following:
The product name – e.g. COCA-COLA;
Slogans – e.g. I’M LOVIN’ IT;
Logos – e.g. a harp for Guinness;
Shape of goods – e.g. the triangular shape of Toblerone chocolate; and
Colours – e.g. the purple colour of a Cadbury chocolate bar.
It is also possible to register a ‘series mark’ which is different variations of your mark, such as ‘dog’ and ‘DOG’. A series mark can consist of up to six variations in any one application and should look the same, sound the same and have the same meaning in order to qualify.
Ownership of a Trade Mark
This may be a bizarre question but, do you own the intellectual property? Before you submit an application to register a trade mark, you must ensure that you are the legal owner. This is particularly relevant to any mark which was designed or created by a third party such as a freelance designer. In law, unless intellectual property rights are assigned in writing then it is the person who actually created the design who is the legal owner. This applies even if you paid and commissioned a freelancer to do the work.
Preferably, you will have a contract with your designer which contains an assignment clause. In this case, the rights would have passed to you and you are the legal owner. If, as is the case in many freelance arrangements, there is no agreement or clause assigning the rights to you, then you’re not entitled to register those rights as your own. In this scenario, you will need to enter into a standalone assignment agreement with the designer to transfer the rights to you. This can be difficult after the event so we would always recommend assigning the rights at the time of creation.
Why is it important to register a Trade Mark?
Registering a trade mark gives the owner a right to exclusive use of their mark in connection with their goods or services. You are also able to authorise others to use the mark or benefit from selling licences for others to use it which often forms part of a businesses’ income stream.
If someone infringes your mark by copying it or creating something so similar that it becomes ‘confusingly similar’ and it causes damage to your business and reputation, you have the right to use your trade mark registration to stop the infringement, known as cease and desist, and in some circumstances recover damages for any losses you have suffered as a result.
Without a trademark you have to use the law of passing off which is inherently more difficult to pursue, requires extensive evidence and can be a lengthy and costly process.
Classes of goods and services
When registering a trade mark it is classified under specific classes of goods and services depending on what the mark will be used for. So for example if a business is in the textiles industry, it will register its trade mark under the relevant classes dealing with textiles. It is crucial to ensure you register in the correct classifications as you will only be protected in those specific classes.
You are permitted to register into classes you may use in the next 5 years, so it’s prudent to consider if your business might expand in the future to ensure you are covered. However, it’s important to consider all your classes carefully as applying for too broad a range of classes could jeopardise the validity of your mark if you then don’t use that class.
What can’t you register as a Trade Mark?
Not every mark can be registered! Any mark that is offensive, such as the use of swear words, will be rejected on absolute grounds.
As well as being offensive, a mark will be refused for absolute grounds which include:
marks that cannot be represented graphically (so not just an idea) or is not distinguishable from other goods or services;
marks devoid of any distinctive character for example, ‘WE LEAD THE WAY’ being a simple statement;
marks which describe the characteristics of goods or services for example ‘DOUBLEMINT’ being used to describe chewing gum;
marks which are customary in your industry such as the use of ‘TREAT’ for a dessert syrup.
As well as absolute grounds, a mark can be rejected for relative grounds. This occurs when you are attempting to register a mark that is either the same or ‘confusingly similar’ to an existing mark. The existence of an earlier mark does not automatically mean your application will fail, but the Intellectual Property Office will notify the existing owner of your application and they have the right to oppose your application. To reduce the risk of opposition, we would always recommend conducting a search of existing registered marks.
Where to find further information on registering a Trade Mark?
The UK Intellectual Property Office is the department who registers and maintains trade marks and their website provides information on the registration process.
Intellectual property is a specialist area of law and we would recommend seeking professional advice and guidance before you apply to register a trade mark for advice on any potential grounds for refusal, to conduct pre-application searches for similar marks and to provide advice on the most appropriate and relevant classes to protect your business.
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Girl Tribe Gang’s #KnowledgeExchange
Girl Tribe Gang’s #KnowledgeExchange has been designed to recognise that ALL of our members have knowledge to share and that we’re ALL experts in the stuff that we know. Each month, we leverage our collective voice and empower our members to upskill each other by exchanging their knowledge.