Registering your trade marks adds real value to your business and needn’t be expensive
We’re all familiar with the registered trade mark logo (®) often seen next to household names but what does it actually mean?
It means that the trade mark has been registered (with the Intellectual Property Office, for UK registrations) and therefore benefits from special legal protection.
Why register your trade marks?
There are three main reasons to register your trade marks:
- Protection. If your trade marks aren’t registered and a competing business starts to use logos or other branding similar to yours, you will have to rely on the law of “passing off” to bring a claim against them. You would need to demonstrate actual loss caused by the passing off – bringing a claim for infringement of registered trade marks is generally more straightforward.
- Brand Prestige. Few smaller businesses register their trade marks. Being able to put the ® next to your logo or brand name can give prestige to your brand and make you stand out from your competitors.
- Brand Value. Most successful business owners hope that one day they will be able to sell their business. Having your trade marks registered adds real value to the business and can make it more attractive to potential buyers.
What trade marks can you register?
Most trade marks are usually words, logos or a combination. However, less commonly they can include shapes, colours, sounds, or even smells!
They must however meet certain criteria – in particular, they must be distinctive, more than just merely descriptive (e.g. “Tasty Foods”) and mustn’t be offensive.
How do you register your trade marks?
Your application will need to state for which classes of goods and services you want to protect your trade marks. BHW Solicitors can help you understand the classes and we can send the application on your behalf.
Assuming that the IPO agree that your trade marks meet the statutory criteria, the application will be published in the Trade Marks Journal for three months, in order to give anyone who might be using similar marks the right to object.
If there are no objections, your marks will be registered for ten years (you can renew them at the end of that period).
How much does it cost to register your trade marks in the UK?
At the date of this article, the IPO charge a fee of £200 to apply for one class of goods and services. They charge a further £50 for each additional class.
Alternatively, you can use the IPO’s “Right Start” service. Under this service you pay 50% of the fees up-front and only pay the rest once the IPO have confirmed that your application meets the statutory criteria.
Europe and beyond
You can apply for a Community Trade Mark (CTM) covering the whole of the EU (currently some 27 territories) through the Office for Harmonisation in the Internal Market.
The registration costs are a little higher, the process takes a little longer and, unless your trade mark is sufficiently distinctive, there is a greater risk of it being denied registration, either because your trade mark doesn’t meet the criteria or because it is too similar to an existing brand somewhere in the rest of the EU.
For those reasons, unless there are compelling trading factors, we would always recommend you apply for a UK registered trade mark first, before considering a CTM.
You can also get protection further afield by applying through the World Intellectual Property Organisation in Geneva. Costs can vary significantly depending on the number of countries and the number of classes of goods and services in which you need protection.
Matt Worsnop is an Associate Solicitor at BHW Solicitors in Leicester and writes regularly on intellectual property matters. Matt can be contacted on 0116 281 6235 or by email at firstname.lastname@example.org.