What might prevent my trade mark 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.
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.
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.
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.
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.
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.
What happens if my trade mark is rejected?
If there is an official objection based on descriptiveness or similarity to a previously filed trade mark you have the option to respond to try and get the decision changed. We will provide you with a separate quote to prepare a response, but we cannot guarantee the objection will be overcome. The response may require us narrowing down the scope of goods or services in the class. If you do not wish to respond the trade mark application will be abandoned.
While our trade mark search and strategic advice will help reduce the risk of major objections and/or make an assessment of such risks prior to filing, we cannot guarantee that a third party or examiner will not oppose the mark as the legal tests for similarity and descriptiveness have a subjective element.
What is a ‘class’ and the ‘spec’ 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. Our trade mark service helps minimise the risk of these (very common) mistakes happening.
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.
How many classes are typically used?
This varies depending on how many different types of goods and services you expect to use under your trade mark. However, it is typically between 1 and 3 classes to cover your core goods or services. Any more than this and your filing and renewal fees can start to get prohibitively expensive. You also increase the risk of your trade mark being attacked due to not using the mark within a particular class (particularly in the US). That is why we recommend not filing too broadly.
What countries should the 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.
What is the Madrid Protocol?
The Madrid System is a mechanism to allow someone to file a centralised application and pay one set of fees to apply for protection in up to 123 countries which also allows you to manage your global trademark portfolio through one centralized system and communicate with local IP offices in English.
Should I file an International Registration under the Madrid Protocol? What are the advantages and disadvantages?
The main confusion is that although the Madrid Protocol is referred to as an “International Registration”, it is not an international trade mark in a literal sense but rather, the World Intellectual Property Organization (WIPO) acts as a central point of contact with various national trade mark offices which still issues local trade marks in the usual way. Therefore, it is still necessary to file trade mark applications in each country/region and pay individual fees, but there is the added official fee of the Madrid Protocol filing plus administration fees.
The main advantage of a Madrid Protocol application is that it can help simplify the administration of your mark, for example, where you need to amend a trade mark specification, you can amend the international filing and WIPO will notify the national trade mark offices. In addition, national trade mark offices will communicate with WIPO in English, which is useful if you are filing in non-English speaking countries, as it means you can sometimes avoid having to appoint a local agent if there is only a minor objection. There are also some potential advantages with allowing your goods and/or services specification to have a broader scope in some countries (particularly China).
The main disadvantage of Madrid Protocol application is the increased filing and administration fees. There is also the risk of “central attack” whereby if the initial “base” application used to apply under Madrid Protocol is invalidated in the first 5 years (e.g. your UK or EU filing) this can invalidate your Madrid Protocol application. This means that you would need to convert the Madrid Protocol application into national filings which creates additional expense. For this reason, we would not normally recommend filing under the Madrid Protocol unless filing in multiple non-English speaking countries. Even then you may choose to file a hybrid application with some applications filed direct and others via the Madrid Protocol.
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.
What is a filing strategy?
This is a bespoke plan around the specific classes and jurisdictions that you should be using for your trade mark filing.
What’s the difference between trade marks, patents and copyright?
Trade marks protect your brand and indirectly the goodwill in your brand. Patents protect ideas typically embodied as inventions. Patents are much more expensive. Copyright arises automatically and protects artistic expression or creative works.
What is the difference between an unregistered trade mark ™ and a registered trade mark ®?
The ™ symbol (if used correctly!) means a trade mark is unregistered
. It has no real legal significance (other than giving notice that you are using a brand or slogan as a trade mark) and the brand won’t be as well protected as a registered mark. If someone already uses your brand name or something similar and it is registered, you could be prevented from registering your mark, and possibly from using it all, even if you have used the name for many years. There are some exceptions, but the law is complex on this. For example, a well known unregistered mark could be used to challenge a registration by someone else. This is why you should always try to get a registered trade mark in the territories in which you operate as soon as possible.
You can use the ® symbol (typically on the upper right hand side) if you have a registered trade mark. Whilst it is not necessary in the UK, it helps notify others of your rights. It is (at the time of writing) required in certain countries like Mexico, Chile, Peru and the Philippines. However it is generally unlawful to use it if you do not have a registered trade mark.
Can I trade mark my designs?
It is possible to obtain a trade mark over a logo. Designs can also be protected by copyright, registered designs and/or design patents. Copyright would be one of the best ways to protect a design, particularly a logo. Copyright protects original artistic expression and arises automatically throughout the world without needing registration, so no action is required on your part. Registered designs and design patents require an application with the IP office, like trade marks, but are typically used to protect the external shape of a design on a product (e.g. the shape of an iPhone case) rather than logos or brands.
How does Brexit affect my trade mark?
The filing of an EU trade mark has up to now been the most cost-effective and simplest way to secure coverage for your trade mark in the UK and throughout the rest of the EU.
However, post-Brexit things will change and an EU trademark will no longer cover the UK.
Please check out our blog for more details on this: Protecting your brand post Brexit.