What Is A Trademark?
It is a sign which identifies the products or services of a business and, may consist of words, slogans, logos, shapes, numerals, colours or any combination of these. In essence it is a badge of origin that allows customers to distinguish the goods or services of one trader from those of another. In layman’s terms a trademark is the name of a product or service.
Read these 9 points covering the question “what is a trademark” here.
When can’t a name or sign be registered?
Trade marks cannot be registered if they:
- describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;
- have become customary in your line of trade;
- are not distinctive;
- are three dimensional shapes, if the shape is typical of the goods you are interested in (or part of them), has a function or adds value to the goods;
- are specially protected emblems (such as national flags, coats of arms, hallmarks, official sign, and state emblems);
- are offensive;
- are against the law, for example, promoting illegal drugs; or;
- contrary to morality
- are deceptive or misleading. There should be nothing in the mark which would lead the public to think that your goods and services have a quality which they do not.
What names make good trademarks?
Trademarks which are highly distinctive and unique make the strongest trademarks and offer the best protection. These often consist of invented words which mean absolutely nothing in relation to the goods or services in respect of which they will be used. Some examples of very distinctive trademarks are:
- Kodak, Xerox, Sony, Facebook, Google, Nike, Accenture, Ebay, Revomark, Viagra, Adidas, WH Smith, and TiVo.
Examiners will also accept word marks involving known names, if none similar have already been registered, such as:
- Pinder Technology
- Alan Hannah
- Hannah Consulting
Also, common words used in unfamiliar ways:
- Bicycle playing cards
- Sky Broadcasting
- Floppy Sausage
- Tickling Trout
- Comparison Mole
Do you have examples of names or words that cannot be registered as a trademark?
Trade mark applications will be refused if the trade mark describes your goods or services or any characteristics of them:
- Leather shoes X
- French food X
- Cheap jewellery X
- Best clothing X
- Reliable Builders X
- Cheap Car Insurance X
Examiners will also refuse to register trade marks which are made up of descriptions customary in your line of business or is non-distinctive:
- Grime 2 Shine X
- Ghost Hunters X
- Fairy Goodies X
- Van-Locked X
- Macqui Supreme X
- The Pure Solution X
Trying to get around the distinctiveness or common phrase barrier by intentional misspelling is not acceptable:
- Supa Food X
Can a non-distinctive trademark ever qualify for registration?
- If a trademark has become distinctive by virtue of prior use then it may be accepted for registration. However, the prior use will have to be extensive, significant and is normally required for at least 5 years. You will also be required to file evidence of this trademark use.
- Adding a distinctive logo to an otherwise non-distinctive name, word or slogan could elevate the trademark to an acceptable level of distinctiveness.
Can emblems and symbols be registered as a trade mark?
We are unable to register any sign as a trademark if it consists of or contains an emblem that has protection under an International agreement. One such agreement is Article 6ter of the Paris Convention for the Protection of Industrial Property.
The purpose of Article 6ter is to protect, and prevent the registration and use of, trademarks that are identical with, or very similar to,
- armorial bearings
- flags and other State emblems
- official signs
- hallmarks
- other emblems
- abbreviations and names of international inter-governmental organizations
How do I register a logo as a trade mark?
A logo trade mark application has to pass additional criteria before it can be registered: for example, a logo trade mark cannot be:
- A three dimensional shape which is typical of the goods you sell, has a function or adds value to the goods;
- A specially protected emblem, such as national flags, royal insignia, coats of arms and the rings of the Olympic Games;
- A mark which is descriptive of the origin of the goods or services
- A mark that is deceptive as to the country of the product’s origin;
There is no extra charge for filing a logo trademark application.
If I register the logo in black and white, does that mean that the registered trade mark would be valid for all colours, or do I need to specify colours that I intend to use?
If you register a trade mark your registered rights are for that mark as filed i.e. in black and white. If you file in a specific colour combination your registered rights will be in that mark in those colours.
The best option would be to file a series trademark by including both the black and white and colour version of the trademark/logo in the registration.
However, your trademark rights extend to similar marks so protection may extend to other colour combinations. This really depends on the mark, the goods and/or services and the impact the colours may have. There are no hard and fast rules as each application is considered on its own facts.
Is it better to register a logo or just a text trade mark?
It is normally recommended to register them both as separate trademarks. However, this will be treated as two separate trademark applications which would obviously increase the cost.
However, if you had to choose one over the other then registering a text only trade mark will give you the best possible protection. So where possible a text only trademark registration is best. If you have a word mark no one else can use those words, with or without a design, so wherever we can we try to register a text trade mark.
Registering a logo, where your rights are in the combined words and graphical elements dilutes the protection given to the text within the mark. For example, if a third party uses or registers similar words but with a totally different design/logo then it is arguable that the respective trademarks, when compared as wholes, are not confusingly similar (and you may not be able to stop them from using the trademark).
In certain circumstances you will have no option but to register the trademark in a logo format. This is particularly relevant when the text is not sufficiently distinctive to qualify for protection in its own right. The logo would therefore serve to elevate the whole mark to an acceptable level of distinctiveness.
What is a series mark?
A series of trade marks means a number of trade marks which resemble each other as to their material details and differ only as to matters of non distinctive character that does not affect the identity of the trade mark.
An application for a series of marks can include a maximum of six marks with the first and second marks being included in the application fee. If there are 3 or more trademarks in a series additional costs will be incurred.
Marks comprising a series are acceptable if they are substantially the same. In the example below the mark applied for clearly consists of two separate words.
Mark Applied for: “Trade Mark”
Series:
- TradeMark
- Trademark
- TRADEMARK
The same applies to the mark where the capitalisation of the second word makes it clear that the mark is really one word even though they are conjoined.Different considerations apply to the remaining two marks where the two words are not separated but are in the same type case i.e. one in lower case throughout and one in upper case.When examining such marks the examiner must decide if the two words “separate naturally”.To do this the examiner will consider how the average consumer of the goods and/or services in question will perceive the marks. If they will all be perceived as the two words you quote as a trade mark then they will form a series, if not then an objection would be raised although there are ways to overcome such an objection.
Series trademarks are only accepted in the UK. A CTM cannot be filed as a series mark.
I have registered my name at Companies House. Do I still need to register it as a trademark?
A common misconception among entrepreneurs in the process of incorporating and establishing a business is that the registration of a company name entitles them to the use the registered company name or trade mark or gives protection to that name. This is not the position. A company registration purely serves to establish a separate legal entity (particularly for limited liability purposes) and does not in any way protect the name that is registered. The only way to secure exclusive rights to use of a name is through a trade mark registration.
I have registered the domain name. Do I still need to register it as a trademark?
A domain name does not protect the brand. So yes you do have to register the trademark.
Why should I do a trademark search?
It is imperative to first conduct a trade mark search. This allows us to ascertain firstly whether the mark is available for registration and secondly whether or not your use of the mark infringes a third party’s registered rights. The consequences of not searching are potentially severe. If you’re in the middle of launching a new product or service, when suddenly you find you’re infringing someone else’s trade mark, it could mean litigation, re-branding, or even withdrawal from the market.
Which countries do I need to register my trademark in?
The simple answer is the countries in which you intend to provide your services or sell your products. Trademarks are territorial and only confer protection in the country is which the trademark is registered. Therefore a UK trademark registration only gives rights to the owner in the UK. A Community Trade Mark (CTM), on the other hand, gives the trademark owner rights throughout the European Union (which of course includes the UK).
Can I register a trademark before the business commences trading?
Absolutely. Registering the trademark is one of the first things you should do. File the application before you start trading. The failure to do so will expose you to significant risk.
Can a trademark be owned by me in my personal capacity or must it be owned by a company?
A trademark can be owned by a person, a company, a partnership, a charity, a trust or any legally recognised entity. It can also be owned jointly by more than one person, company or other legally recognised entity.
As a general rule the trademark should be owned by the entity, company or person that will use it.
What is included in the cost to register a trademark?
The fees you pay at the outset cover the official government fees, our fees for preparing the specifications, drafting the application , filing the application, paying the official government fees due, reporting examination or acceptance of the application and sending you the trademark registration certificate. There are no hidden fees and no additional costs will be incurred unless the application runs into problems such as objections from the registry or third parties.
Can you guarantee that my trademark registration will be successful and do I get a refund if the application fails?
As a general rule we cannot guarantee that an application will be successful. However, 98% of the applications we file proceed to registration so the risk of being unsuccessful is very small indeed. In certain circumstances we do offer a money-back guarantee. If your trademark qualifies for the money-back guarantee and you have paid the premium for this service then we will refund our fee to you if the application is unsuccessful. This is subject to our standard terms and conditions. Please note that the government fees are not refundable. At the end of the day we are flexible and give you various options. You choose the package that best suits your needs and budget.
What is trademark priority?
If you file a trademark you may then within six months of the application date apply for the same mark in a different country and claim priority from that mark. This means that the new application would then be given the same filing date as the first trademark. This is called a priority application. You may still file a trademark application in any other country after six months but the new application would then be given its own filing date.
