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By LegalEdge News

Protecting your brand: 10 things you should know about trade marks…

How to protect your brand with a trademark. Ten top tips for business owners to follow.

You’ve worked hard to build up your business and grow your brand but have you protected it? By registering a trade mark (e.g. your name, logo and/or slogan) your reputation and brand identity is protected as it prevents others from using it or something too similar. Here are 10 things you need to know about trade marks.

1. What is a trade mark?

A trade mark protects your business identity – you can use it to prevent others from using a brand and/or logo that’s the same or similar. 

You can apply to register a trade mark at an Intellectual Property Office (IPO), which is an official government body responsible for intellectual property rights.

2. Do I really need to register it?

If you don’t register a trade mark and someone else has registered something similar or is just using a similar name they could stop you from using your name, force you to change your branding, give up your domain names, your social media accounts, etc.

3. What should/can I register?

Trade marks are usually either words, which protect the letters that spell out your brand (regardless of appearance), or a logo, which protects the actual appearance of your mark. We recommend trying to obtain a word mark so that you are protected regardless of any style.

4. What might prevent my registration?

You may not be able to register a trade mark if it’s too similar to a previously filed mark, or if your mark is too descriptive. The Intellectual Property Office can reject the application. And other brand owners can object to it if they think it impacts their brand.

5. What is a minor objection?

A minor objection is that there is some technical issue with your application such as your goods and/or services specification being too broad or unclear. Minor objections generally do not prevent the trade mark from being registered, provided you respond to IPO communications.

6. What is a major objection?

This could be because the trade mark is identical or too similar to an existing registered mark, or if it’s too descriptive and should be free for everyone to use. Major objections can prevent the trade mark from being registered at all, or may require negotiation with other brand owners to ensure their rights aren’t impacted.

7. What is a ‘class’ and why are they important?

Classes distinguish the type of goods and/or services your brand offers. Each covers a specific category, although there are some overlaps. You have to provide a description of your goods/ services and pick the right class(es) when filing your application (the ‘specification’). If you choose too many and/or your spec is too broad you might not get the mark registered. However, it’s also important to note that you can’t broaden the scope later on. 

8. What are the classes?

Classes 1 to 34 cover goods, 35 to 45 are services. For example, software/ hardware is class 9, clothing is class 25, beers and non-alcoholic drinks is class 32, advertising/marketing/business consulting is class 35, SaaS and software development is class 42, services for providing food and drink is class 43 etc. These are known as the Nice Classification system, which is available here.

9. What country should a trade mark be filed in? Should I file in the EU and/or the US?

You should apply for a trade mark in the countries in which you do business or plan to. An EU  trade mark will cover the UK if it is registered prior to Brexit, but after Brexit you will need to apply for a UK mark separately.

If you are planning to expand into other countries it might make sense to apply for an EU trade mark and also one in the US. This is a cost-effective way to get protection for your brand over a large area. It may, however, increase the risk of objections to your application.

10. When do I need to renew my trade mark?

In the UK and EU, every 10 years from filing. In the US, after 5 years to file a declaration of use and incontestability then every 10 years from filing. Most countries require trade mark renewals every 10 year from filing.

We can help manage the trade mark application process for you. We’ll search trade mark availability, help you pick the right classification(s) and jurisdictions and get the specification right. And we’ll keep you up to date with any feedback.Check out our Quick Fees Calculator to see how much it will cost to file your trade mark. And click here for more FAQs. 

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