Table of Contents
As a business owner, filing a trade mark application can be integral to protecting your company’s intellectual property. However, you may encounter several issues in this possess. This article explores three key things your business needs to do before starting a trade mark application.
1. Conduct a Search of the Trade Mark Database
In England, it is possible to conduct a search of an online database which shows every trade mark which is registerd with the Intellectual Property Office. Trade marks are designed to be unique and therefore grant exclusive rights. Thus, it is not possible to register an identical or similar trade mark if it has already been registered in your area of industry.
Therefore, before planning or submitting an application for a registered trade mark, it is important to conduct a search in order to avoid a potentially wasted application. It is vital to check the database to ensure you are not unknowingly infringing another business’s intellectual property rights by using their registered trade mark without their consent.
2. Design Your Mark
Once you have conducted a search of the database, you can decide on your final design for your mark. This can take the form of a:
- symbol;
- ogo;
- phrase;
- word; or
- colour.
Trade marks are highly unique in character and can take any or all of the above forms. It is encouraged to be creative when designing your mark. This will increase your chances of a successful application, and assist in your mark being memorable among consumers in your area of trade. When designing your mark, you must also keep in mind the restrictions in place for trade marks. For example, trade marks cannot be offensive, misleading or too descriptive or commonplace. They also cannot take the form of recognised state symbols or emblems such as flags.
It is also important to be aware of other intellectual property rights that can arise when designing your trade mark. If you are the original creator of the mark and it is considered a piece of artistic work, your mark could also be protected by copyright protection. Copyright is an automatic right which protects original pieces of work from the moment of creation. You therefore do not need to register copyright. It is an important IP right to be aware of in addition to any additional protections you receive as a result of registering your trade mark.
Continue reading this article below the formCall 0808 196 8584 for urgent assistance.
Otherwise, complete this form and we will contact you within one business day.
3. Plan Ahead for Your Future Business
Trade mark registration lasts for 5 years and therefore you should design your trade mark with this in mind. Your registered trade mark must be able to represent your goods or services business in the same way consistently for a 5-year period, otherwise it will be somewhat useless. By planning ahead, you will maximise the use of your mark and get the best value for money.
It is also important to be aware of the different types of trade mark classifications. When you are considering trade mark protection, you will have to select trade mark classes to register your proposed mark within. These classes represent various industries such as:
- retail;
- agriculture;
- hairdressing;
- sports goods;
- chemicals; and
- clothing.
These are only a few examples of the different areas you can choose to register within. There are 45 classes in total and your trade mark will only be protected in the classes you select. You should therefore keep in mind the industry you currently trade in, and also any areas you are going to expand into within the near future. Of course, you can add additional classes to increase your protection, but this will obviously increase the overall application fee. Overall, the application process for a standard application is relatively straightforward, but it is advisable to obtain an intellectual property lawyer’s opinion to ensure no easy mistakes have been made.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
Key Takeaways
A standard trade mark application in the UK can be straightforward. However, it is important to prepare correctly to save money and time on an application. The most important thing to be aware of is that trade marks must be unique. Therefore you cannot hold the same mark as another business that has already registered theirs with the Intellectual Property Office. For this reason, you must thoroughly search the online database of registered marks to ensure your proposed mark is not already registered.
Once you are content that you have a design in mind that another business does not have a trade mark over, you can finalise your design and ensure it meets all the criteria for registration. You may seek professional advice about this. During the design process, it is important to keep in mind your future business plans and your intentions for the mark to represent your business on a long-term basis. Planning ahead can help you to get the full value from trade mark registration, and can also assist you in selecting the best trade mark classes to register your protection within.
If you need help or advice around registering or designing your trade mark, our 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
Your proposed trade mark must be unique and distinctive. It must also not be misleading, too descriptive or commonplace. You should aim to be as creative as possible in your design to maximise your chances of a successful application.
You can use a trade mark prior to registration as long as it is not already registered or used by another business. If you wish to use an unregistered trade mark, you can place the TM symbol next to it, to show other businesses your intention to use the mark in an unregistered form.
We appreciate your feedback – your submission has been successfully received.
