Trade marking is an option available to businesses who wish to protect the identity of their brand through registering a symbol, name, slogan or combination of both, associated with the organisation. Trade marks are classed as badges of origin and are also beneficial for consumers who use trade marks to attribute goods or services to a particular business or brand. Additionally, trade marks may be used as a form of accreditation or certification to signify that they meet certain standards or criteria, such as sustainably sourced goods.
Registering a trade mark can be a good business decision as it protects your intellectual property (IP). However, it is not always necessary and can be costly, especially if done wrong. Since you pay to apply, not for the actual trade mark, failed applications are a wasted expense. Therefore, it’s important to follow proper processes and know a little bit about trade mark registration criteria before applying. You’ll also want to weigh up what you need from trade mark protection as this may affect the decisions you make in deciding whether or not to carry out a registration.Here are 5 things to consider before making your trade mark application:
1. Is Your Mark ‘trade markable’?
Before making your trade mark application you’ll want to check that you meet the criteria for a trade mark. Strict regulations govern the eligibility for trade marking certain assets. You cannot obtain a trademark for:
Material deemed offensive
Logos containing protected emblems like flags
Commonly used descriptive terms directly related to the product or service, e.g., 'builders' or 'kiwi'
Anything deceptive or not reflective of the primary business focus
Overly generic symbols closely associated with the nature of your business, such as a pencil symbol for a pencil manufacturer
In addition, your application will not be successful if a similar trade mark already exists in the country you’re registering in. Therefore, you should check the IPO register before making your application.
2. Where Should Your Trade Mark Be Registered?
Your trade mark will only be applicable in the country it is registered in. Therefore, if a business registers a similar trade mark in the EU and yours is registered in the UK then you may both be granted the trade mark in the country you have applied in. Of course, if you wish to operate in the EU then having a rival company with a similar trade mark may be an unwelcome obstacle.
Therefore, it is worth seriously considering where you may want to operate in the future when considering where to register your trademark, and then check the registers in those countries. It is possible to register trade marks in various regions but this comes at an added cost.
A UK trade mark application will cost £170 (for one class of goods/services). Registering a trade mark with the EU is €850 but this protects your IP across 27 member states, no longer including the UK. You may also wish to apply to register your trade mark in the US and/or countries across the African, Asian, South American, Antarctic and Australian continents. Some organisations can assist you in registering your trade mark across multiple regions but there is currently no global trade mark.
3. Would A Series Trade Mark Registration Be Most Cost-Effective?
A more cost-effective approach to registering a trade mark may be to apply for a ‘series’ trade mark registration. This seeks to protect variations of your key trade mark so that trade marks with common traits but some differences can be protected as a group, overcoming the need to register them as separate trade marks.It’s important to recognise that proper trade mark registration should extend to similar trade marks so a series registration may be unnecessary.
However, there are certain scenarios where variations may be considered different enough to need trade marking but similar enough to do this under a series trade mark application. For example, it may be possible to register logos depicting both US and UK spellings of included words within the same series.Â
To stay within the IPO guidelines, refer to this useful guide from the IPOÂ .
4. Specification Drafting
Specification in a trade mark application helps to define the scope of protection for the mark.Â
When drafting a specification for a UK trade mark application, it's crucial to be clear, specific, and mindful of the classification guidelines. Understand your goods/services thoroughly, use precise language, and avoid ambiguity to prevent objections. Consider potential future expansions but don't include goods/services you don't currently offer.
Research existing trade marks to avoid conflicts and seek legal advice if needed. Ensure compliance with trade mark law and thoroughly proofread before submission to increase your application's chances of success.
5. Nice Classifications
Nice classifications are a method of classifying goods and services. This effectively organises products and services under different types. Trade mark registration use these to allow businesses to trade mark badges of origin specific to their business type or deliverables. This way, fair competition is upheld.
For example, a clothing manufacturer may have a trade mark with commonalities with another business and this would be ok, so long as they are not operating in the same sector or supplying consumers with similar products. A food and beverage brand though, would not be able to have a similar name, slogan or logo as another food and beverage business.
Classifications aim to make brand recognition simpler for the public without making it unnecessarily difficult for brands to come up with entirely unique trade marks. Hence, when you apply for a trade mark it must be attributed to a Nice classification. Your trade mark will then be protected within this categorisation. That being, it is possible to apply for multiple classes, though there is an added cost of £50 for each one. It’s important to read through the terms and carefully consider the classes you choose because, although you can register under multiple classes, you cannot add on new classes after your trade mark is registered. To register your trade mark under additional classes after it has been registered you will have to make a new application and pay separate renewal fees.
Using Right Start To Register Your Trade Mark
The trade mark application process can be confusing and you’ll need to consider the future growth of your business whilst being upfront and transparent about the nature of your business at the time of registration. It can also be difficult to know which aspects of your trade mark to protect and which class(es) you need to register them with as well as whether a series trade mark application would be more suitable. That’s why many business owners consult a commercial solicitor, such as myself, to assist with trade mark registration. Having the help of a professional can greatly increase your chances of success.
If you are submitting a trade mark application but are concerned about it being rejected, then the Right Start application may be the best approach. This method means you only pay part of the fee upfront and your application is checked (by the Trade Mark Examiner) to ensure it meets the requirements. If it does meet the rules, then you can pay the other half of the fees and proceed with your application.
When deciding to create a trade mark you’re making a real commitment to the future of your business and your brand identity, so it’s worth doing it right. Make sure you do some research and follow the guidance above before making your trade mark application, as you don’t want to have to re-file and pay additional IPO fees if you make a mistake the first time round!