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Businesses in England often seek to register their business name as a trade mark with the Intellectual Property Office. You may also wish to do so. But suppose you discover that your business name is already registered as a trade mark. In this situation, there are various options available to you and restrictions on what you can do. This article discusses the situation if your business name is already registered as a trade mark.
Trade Mark Registration vs Companies House
It is essential, firstly, to distinguish a trade mark from a company name. A trade mark is a distinctive mark that identifies goods or services from a business that is easily distinguishable in their areas of industry. It can take the form of a:
- logo;
- slogan;
- colour; or
- sound.
In contrast, a company name identifies a legal entity. This is incorporated as a company at Companies House rather than registered at the Intellectual Property Office.
However, a business can have a registered trademark and an incorporated company with the same name. If your business name is registered as a trade mark, you will not be able to register your company name with Companies House. If you do, it could be a trade mark infringement, and the owner of the trade mark could, therefore, take legal action.
Revocation for Non-Use
Business owners often register their business name as a trade mark once they begin trading. However, registration of a trade mark lasts for a 10-year period. Often, businesses have ceased trading at that point. Or they may have rebranded and stopped using the mark. Where a trade mark is no longer in use, you can make an application for revocation.
You can apply for revocation of a trademark that has not been used in five years since registration. You can also do so for any continuous period of five years where there are no reasons for not using the mark. If you are unsure how to calculate this period, you can consult the manual of trade marks practice. This is available from the UK government website. An application for revocation costs £200, and you must detail the exact dates the trade mark has not been used.
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The Importance of Trade Mark Classes
Registering a trade mark entitles the owner to exclusive rights to use the mark in line with the goods or services industries in which it is registered. These are trade mark classes. There are 45 classes, consisting of 34 classes for products and 11 classes for services.
If you find your business name has been registered as a trade mark, you may still be able to register a similar trade mark within a different class. For example, suppose your business name has been registered in Class 9. This relates to computer software products and data processing equipment. This may be inapplicable to your business if you own a hairdressing business. Therefore, you may still be able to register your business name because you are seeking to register it within a different industry area.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Buying a Trade Mark
Intellectual property is an asset just like any other property that can be bought and sold. So, you can offer to purchase a trade mark from the original owner if you feel it’s of value. However, the intellectual property holds its value, so you may have to pay a premium if the mark has gained value for the original business.
Altering Your Trade Mark Design
If your business name is registered as a trade mark within the industry you work in, it may be necessary for you to alter it. This is because trade marks must be distinctive in character. Therefore, you will be unable to register your business name while the original mark is registered.
Key Takeaways
If someone has registered your business name as a trade mark with the Intellectual Property Office, you still have some options available to you. However, you should also be aware of the restrictions. For example, you cannot incorporate your company name with companies house while there is a trade mark registered. This could amount to trade mark infringement. Also, there may be the possibility to apply for revocation of the trade mark or to register a similar mark in a different trade mark class.
If you need help or advice around trade mark registration, LegalVision’s experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.
Frequently Asked Questions
You can submit an application form along with a fee of £200. You should ensure that you have exact dates of non-usage of the mark, as you will need to provide these within the application.
Can I register my business name at companies house?
If your business name is registered as a trade mark, you will be unable to incorporate your company name at companies house. This could potentially infringe on the registered mark. You should, however, take legal advice on this.
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