Q: Is a trademark search necessary?
A: Although a trademark search is not compulsory, it is strongly recommended if you are thinking about adopting a new trade mark. The purpose of the search is to ascertain whether or not your proposed mark is available for use and registration and in particular whether any potentially conflicting trade mark is already registered. A trade mark search will minimise the risk of infringing another party’s earlier rights and so could save you a lot of money.
Q: Does a trade mark search guarantee that my mark will be registered?
A: No. There are many factors involved in the registration process, which cannot always be predicted, and therefore, even when a search is “clear”, it is not possible to give an absolute guarantee that a trade mark will be registered. A trademark search is rather like a forecast; it gives you an indication of what is likely to happen, but sometimes it can be wrong. Nevertheless, the search should turn up any major problems that are likely to occur with an application.
Q: What can be registered as a trade mark?
A: A trade mark can be any sign that distinguishes the goods or services of one undertaking from those of others. It can be a word or words, a design, letters, numerals, a slogan, a shape, a colour or a combination of colours.
However, whatever form the trade mark takes, in order to be capable of registration it must be distinctive. That is to say, a trademark must be capable of distinguishing your goods or services from those of other traders. It is not possible to register marks that describe the goods or services or any characteristics of them (for example, words that show the quality, quantity, purpose, value or geographical origin of the goods/services), or words that are commonplace in the trade. The reason why such words cannot be registered is that they must be free for everyone to use. For example, the word “ORANGE” would not make a good trademark for fresh fruit or marmalade, but it is perfectly acceptable for mobile phone services. Attempting to register marks that lack distinctive character can waste time and money. We will tell you if we think that your mark has a poor chance of being registered.
Sometimes, a trade mark that appears descriptive may still be registered if it can be shown that the mark has in fact acquired a distinctive character as a result of the use made of it. Normally about five years of use is required.
Q: Do I need to register my trademark in order to get protection?
A: In most countries a trademark registration is the quickest and cheapest way to ensure that you have the sole right to use the trade mark. In the UK any trader using his trade mark acquires common law rights simply by using the mark. However, these rights are more difficult and expensive to enforce than the rights arising from a trade mark registration. In addition, it takes time to acquire common law rights because your trade mark must have a reputation. If you have only used your trade mark for a short period, and have not filed an application for registration, it may not be possible to stop others from registering your trade mark and interfering with your right to use it.
It is important to note that registering your name as a domain name or company name will not stop a competitor using your name as a trademark, or trying to register your name as their own trade mark. In fact, if someone else registers your name as a trade mark before you do, they may be able to stop you using your domain name and make you transfer it to them.
A UK trademark registration gives the proprietor the exclusive right to use the registered trade mark on those goods or services for which it is registered. A registration also gives the owner the right to stop others from using confusingly similar trade marks for their goods or services or for similar goods and services. In some circumstances, the owner of a registered mark can stop others from using a trade mark for goods or services that are not similar to those for which it is registered.
The advantages of registration include:
- You have stronger rights to use and protect a registered trademark.
- An action for infringement of a registered trademark is easier, quicker, and cheaper than an action for passing off.
- Having a trade mark on the register warns others of your claim to that mark and thereby acts as a deterrent.
- Licensing of a registered trade mark is safer.
- A UK trademark registration can be used as the basis of an International Trademark Registration covering many overseas countries via the Madrid Protocol.
Q: What do the fees that I pay at the outset cover?
A: The fees you pay at the outset cover our fees for preparing and filing the trade mark application and any government fee payable. If no serious objections and no oppositions are encountered, then the application should swiftly proceed to registration without any further costs being incurred.
Not included in these fees is the cost of dealing with any objections, oppositions, or other procedures before the Intellectual Property Office, or any other legal work required.
Q: How long will it take for my trade mark to be registered?
A: For UK trademark applications that do not encounter objections or oppositions, the process will not usually take more than about 5-6 months.
For European Union Trade Mark applications the process is slightly longer, but applications that do not encounter objections or oppositions should be registered within about 6 months.
If there are official objections, or oppositions from third parties, then the process can take much longer. Importantly, protection will date back to the filing date of your application and anyone who has been using your mark illegally since that date will have been infringing your rights and may be liable to you in damages.
Q: Once a Trade Mark has been registered, can I alter the mark or add other goods or services if my business expands?
A: No. Once a trademark application has been filed it is not normally possible to change the trade mark in any way. Nor is not possible to extend the application to more goods or services. A further application will be necessary to cover such extra goods or services. When you apply you should advise us of the likely future scope of your business so that we can make sure your application adequately covers such extra goods or services.
Q: What is a European Union Trade Mark?
A: A European Union Trade Mark, or EU Trade Mark provides protection in all EU Member States.
Q: What if I am only interested in a few of these countries?
A: EU Trade Mark registrations are unitary and cover the whole of the EU. It is not possible to pick and choose the countries. If you are only interested in one or two countries it may be cheaper to file national applications or an International Trademark Registration under the Madrid Protocol.
Q: What is an International Registration?
A: An International Trademark Registration enables protection for a trade mark to be extended to many countries under the Madrid Protocol system. The system is administered by the World Intellectual Property Organisation (WIPO). The Madrid Protocol system greatly simplifies the process of registering a trade mark in several member countries by avoiding the need to file an application in each separate country.
Q: How long does my trade mark last?
A: Both UK and EU trademark registrations are valid for ten years. Registrations can be renewed for further ten-year periods on the payment of a renewal fee.
Q: Can I sell my registered trademark?
A: Yes. A trademark is similar to other property you may own. It may become very valuable and you can sell it (known as an assignment) if you wish. We can advise you on the legal requirements.
Q: What is the difference between the TM and ® symbols? When can I use them?
A: There is no requirement for you to identify your trade mark as registered. The TM symbol merely indicates that you view the particular sign as your trade mark. It can be used on either an unregistered or a registered mark.
You can use the ® symbol or the abbreviation "RTM" (for Registered Trade Mark) to show that your trademark is registered. You should be aware that it is an offence to indicate that a trademark is registered when it is not.
Whatever your trademark question, please contact us.