How to Use Trade Marks to Protect Your BrandJune 8, 2018
“Your brand is your single most important investment.” ~ Steve Forbes, Editor-in-Chief, Forbes Magazine
Invest wisely, and your brand has the potential to secure a huge return on investment. In fact, the brand’s value could eventually surpass that of your business’ physical assets. So how do you protect it?
Below, we explore how you can use trade marks to legally protect key aspects of your brand, from the images and words to the concepts that define your business.
What Is Your Brand & Why Does It Matter?
Your ‘brand’ is about far more than the name of a product. It encompasses everything that communicates who you are, what you do and how you do it. Your brand includes your company values, mission, and purpose. It’s the relationship you have with your customers and their perception of your products.
A successful brand sets you apart from the competition and helps build a strong customer base. This is the foundation of your long-term business success. So, it’s worth protecting!
What Is a Trade Mark?
Trade marks are the signs and symbols associated with your business that distinguish your goods or services from others’. They are intangible assets that form an important part of your intellectual property (IP). Trade marks are the legal definition of your brand.
Trade marks fall into two key categories:
Word marks – These are the words and phrases that represent your brand, such as your trading name. Think, ‘Google’, ‘Nike’ and ‘Starbucks Coffee’.
Figurative marks – These refer to the non-text visual representations associated with your business, such as image-based logos and colour combinations.
Trade marks can be words, images or a combination of both.
In certain circumstances, other brand features can be ‘trademarked’ such as sounds and shapes. For example, Nestlé trademarked their four-fingered KitKat shape in many countries (although their trade mark application was rejected in the UK).
What Can’t Be Trademarked?
Be aware that certain IP assets cannot be trademarked, such as original pieces of work. Instead, they are protected under alternative laws e.g. copyright. Read more about design and copyrights here.
How to Register a Trade Mark
In the UK, trade marks can be registered with the Intellectual Property Office (IPO). This is worth doing early in your business journey to prevent trade mark infringement and give your brand strong legal protection. Registering your trade marks helps you avoid unintentionally using someone else’s brand and prevents them misusing yours!
Below we reveal some of the key steps needed to successfully register a trade mark in the UK.
1. Does your trade mark meet the criteria?
According to the IPO, trade marks should be ‘distinctive for the goods and services you provide’. The IPO will not accept trade marks that:
- Are offensive or illegal
- Are deceptive or misleading
- Include protected emblems
- Use common industry terms such as a fabric store called ‘Polka Dot’
- Describe products or their characteristics e.g. a sock shop called ‘Socks’
This list isn’t exhaustive; its worth seeking legal advice to ensure your trade marks are eligible.
2. Is it unique?
Trade marks must be unique. This means you can’t register a trade mark that is the same as or similar to one that already exists in the same category (‘classification’).
So, it’s important to find out if your desired trade mark is already taken. Start by searching the IPO’s database of registered trade marks. Additional searches may be required – seek legal advice to ensure your proposed trade marks are available and meet legal standards.
Give it a go! Let’s imagine you want to register the trading name, ‘Pink Elephant’. How many similar business names do you think already exist? Search for the answer here.
3. Pick a classification
There are over 15 active trade marks registered as ‘Pink Elephant’ in the UK. These trade marks clearly aren’t unique. However, they’ve been accepted for registration because they are unique within their specific classification category.
Classification (or class) refers to the type of goods or services trade marks represent. There are 45 classes, representing different industries from ‘hand tools’ and ‘cosmetics’ to ‘entertainment’ and ‘legal services’.
Each category is represented by a different number. For example, to register a clothes shop you would need to register it in class 25. But if you wanted to register a furniture company by the same name, it would be class 20.
Identify which class to register your trade mark in – Be aware you can only use trade marks for the class they are registered. So consider how your business may evolve. Will these trade marks still adequately represent your goods and services five years down the line?
4. Submit the application
Once you’re sure that your trade marks are unique within their class and meet the IPO criteria, you can complete the application form. There is a charge for this service and you can’t change registered trade marks. So, make sure you’re completely happy with your application before hitting send.
If in doubt, seek legal advice; a commercial lawyer can review your application to give you the best chance of success.
5. Use it or lose it
It’s official! Once registered, you have the right to use the ® symbol after your brand assets to signify their trade mark protection. Put it to good use! If you don’t use your trade mark within its classification, the IPO have the right to revoke it on grounds of non-use. In this case, it will be officially ‘dead’ on the database and free for someone else to claim. Remember, your trade marks must be active to stay ‘live’ and protected!
We’ve exlored the importance of your brand and some key steps needed to protect it. But it doesn’t stop here. Legally protecting trade marks and other IP assets is an ongoing and often complex process. Seek expert legal advice to ensure every aspect of your brand is considered and protected, now and in the future.
Would you like help to legally protect your brand? Contact us for a free initial consultation with one of our commercial lawyers.