Products and services are important in any business but brand is paramount. Build a recognisable brand with a strong reputation and that becomes your greatest asset. And what do we use to recognise a brand? Most often it will be a logo. From your packaging or products to the emails you send and the sign on the office door, your company logo is used on almost everything associated with your organisation. It becomes, or will become, how consumers recognise your brand. So how do you protect it? Your logo is protected under automatic UK copyright, and you can use the law of passing off to protect an unregistered trade mark, however, it is much easier to protect your brand with a registered trade mark. Armed with a trade mark certificate you are much better placed to argue your rights and to prove others are infringing.
A trade mark is a badge of origin. It can include words, shapes and graphics but it must be unique to your organisation. Typically, businesses trade mark their name and/or their logo. A trade mark can be used to identify your products or intellectual property. However, a trade mark may also be used as a form of accreditation or certification to guarantee the product’s standards or characteristics. For example, the Red Tractor trade mark can be used on food items that meet their criteria for being responsibly sourced and safely produced.
Registering a trade mark means that no one else can legally use it to impersonate your business. Anyone who does so could face legal action for infringement. Furthermore, a trade mark gives your company and brand a certain gravitas.
Brexit has impacted the way that you might register your trade mark and where it will now be valid. In this guide, we’ll look at whether your trade mark is still valid post-Brexit, how to register a trade mark in the UK and how to register a trade mark in the EU.
Is My Trade Mark Still Valid Post Brexit?
If you had an EU-registered trade mark prior to January 2021 then this should have been automatically transferred over to the UK trade mark equivalent. You should not have incurred any charges for this and may have been alerted to the transfer but not been required to complete any paperwork. Your trade mark will now be registered as a UK trade mark and protects your brand in the UK, meaning no other company or person operating in the UK can use your trade mark without your consent.
Any EU trademarks (EUTMs) registered post-Brexit will not be valid in the UK.
Applying For A UK Trademark
If you’re trading in the UK then you can apply to register a trade mark. A company, brand, logo or product name can be registered as a trade mark. You may also wish to trade mark a slogan to protect it from being associated with any other brand. ‘Have a break…have a KitKat’, for example, is a trade marked slogan.
There are strict rules about what you can and cannot trade mark. You will not be allowed to trade mark:
Anything deemed offensive
Logos that includes protected emblems (such as flags)
Commonly used descriptive words referring to the product or service, such as ‘oranges’ or ‘marketing’
Anything misleading or not representative of the key business focus
Anything too generic that is also closely related to the nature of your business, such as a banana symbol for a banana supplier
You can apply to register a trade mark in the UK through the Intellectual Property Office at Gov.co.uk. A trade mark application for the UK will cost a minimum of £170 (for one class of goods/services) and this fee is non-refundable even if your application is rejected. So, although the process of applying for trade mark registration is reasonably straightforward, it can be a good idea to have a solicitor assist you with your application. Having a professional solicitor experienced in intellectual property law can increase the likelihood of your application being accepted the first time around.
Want to know more about applying for a UK trade mark? Read my 7 Simple Steps To Protect Your Brand With Trade Mark Registration.
Applying For An EU Trade Mark?
You can apply to register for an EU trade mark online at the EUIPO website.
The good news is that the guidance for what can and cannot be registered as a trade mark and the general application process is very similar in the UK and the EU. However, post-Brexit, your trade mark will have to be registered separately in the UK and the EU and yes, unfortunately, that does mean paying twice.
The EU allows you to register your trade mark across all of its member states so this is worth considering if you’re operating, or planning to operate, in any EU countries. The cost to register a trade mark with the EU is currently €850 but this will protect your IP across 27 states.
Is It Worth Registering An EU Trade Mark?
If you’re trading in an EU country or you have an online business that ships abroad, it’s worth considering registering an EU trade mark. Especially if your business is likely to grow across Europe in the future. If you have built a successful business and are ready to expand, the last thing you want is to discover that another company is using a trade mark or a trading name similar to yours in a region you plan to operate in. Registering your trade mark should prevent this from happening.
However, if you're trading internationally, or plan to, you may find it simpler and more cost-effective to register an international trade mark. An international trademark can protect you in any country signed up to The Madrid Protocol, an agreement devised by the World Intellectual Property Organisation. Fees will vary depending on how many countries and classes you wish to register your trade mark in.
Help Registering A Trade Mark
Whilst you do not need a legal professional to register a trade mark, many businesses opt to enlist the help of a commercial solicitor. Someone knowledgeable in IP law can advise on what you may consider trade marking and increase the chances of your trade mark application being accepted. Making small mistakes in your application can be costly, particularly if applying for trade marks in various counties or classes.
I offer a free initial 30-minute consultation or you may find that one of my trade mark packages better suited to your wider business needs. These also include consultation on trademarking.
I offer a Trade Mark Report Service in which we will advise on the registrability of the mark and check the Intellectual Property Office’s registers to see if anyone else has the same or similar mark. We then prepare a report for you with our findings, and advise on which class of goods/services you should register your mark in, the best way to protect your name and/or logo and tactics for dealing with any earlier rights owners. This is always advisable before spending money at the IPO registering a mark that might not be available or registrable.
For those of you who are time poor, I also offer a Trade Mark Registration Service. This consists of me submitting the application to the IPO, dealing with all the correspondence from the Trade Mark Examiner, dealing with any enquiries and guiding you through the registration process right through to the issuance of the trade mark certificate.