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By LegalEdge News

Protecting your brand: avoid these 5 mistakes when registering a Trade Mark


Registering a trade mark shouldn’t be daunting or expensive. And if you get it right at the start it will protect your brand reputation and identity as you grow. But it is important to get it right…

  1. Just filing a logo

This is really common. You should always register a word (i.e. the standard characters without any styling), rather than a logo, as it protects the name irrespective of the style. Registering a logo on its own only protects it as is, i.e. in that style and colour. So, there’s little protection if/ when you update it. (N.B. Some countries outside the EU and UK allow filing a greyscale logo to protect all colours.) 

You might want to register a logo as well if, for example, it’s a core and recognisable part of your branding. But you should only register a logo instead of a word if can’t get the name registered on it’s own (e.g. it’s too descriptive or similar to something else). 

  1. Choosing the wrong classes and/ or specification

Classes distinguish the type of goods/ services you sell and cover specific categories, although there is some overlap. You must pick the right class(es) and provide a description of your goods/ services when filing your application (the ‘specification’). 

We often see trade marks filed in too many classes (which also increases the fees), in the wrong classes (e.g. downloadable software in class 9 instead of software as a service in class 42) and with specifications that are either too broad (e.g. a copy and paste of the entire class description) or too narrow.

If the description is too broad and/or you choose class(es) that aren’t relevant your trade mark could be challenged if/ when you try to enforce your rights (N.B. You can go broader to start if you intend to use it within that broad scope within 5 years. If you don’t you’ll need to narrow the specification.)

If you file too narrowly, (i.e. miss relevant classes or the description doesn’t fully cover the goods/ services) you may not be able to prevent competitors from using the same or similar names for competing goods/ services. Critically, it isn’t possible to broaden the scope after filing. 

  1. Not registering in the right countries

You should register trade marks in the main markets in which you do business or intend to within the next 5 years. We often recommend filing in the EU and the US for broad and cost-effective coverage i.e. at least 50% of the global markets by GDP. 

N.B. Post Brexit (31 Dec 2020) an EU mark will not cover the UK unless it’s already registered, so you will need to file in the UK separately (check out our blog on this).

  1. Making it too descriptive

If the name/ phrase is too descriptive the registry won’t register it, basically because you shouldn’t have an exclusive right to use it. A good test is to see whether others use the term to describe their own services in good faith. For example, the words/ phrases On the Cloud for SaaS services, Open Data System for software, and Bran-Flakes for a breakfast cereal need more distinctive words added. 

Suggestive trade marks such as easyJetQuickBooksBurger King and WeWork are registrable and can provide a marketing advantage, but can be difficult to enforce against infringers later on, particularly the descriptive elements such as the words Burger and Jet.

The best, strongest, trade marks are generally made up/ random/ arbitrary, e.g. Xerox, Xero, Juul, Magic Leap, Accenture, Apple (for electronic devices not food or drink), etc.  

  1. Not doing your due diligence 

Doing a trade mark search before you apply significantly reduces the risk of an application being rejected due to similar marks already being registered. 

Whilst the words themselves are key, it’s also important to consider the sound and meaning of the words too. For example, iPod and eyepod look different but sound similar, and easyJet and simpleJet look and sound different but are conceptually similar. So in both cases the latter word would be difficult to register.  

If in doubt get some advice so that you get it right at the start. It’s a small cost compared to the risk of problems later on, e.g. being forced to rebrand. We charge a fixed fee of £750 + VAT + official fees, which includes a trade mark search, strategic advice, and management of any minor objections until registration. Try our online calculator here.

You may also find our overview of how it works and FAQs useful.

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