In the Information Age, it is important for businesses to realise just how valuable their Intellectual Property (IP) is.
When you have invested time, energy and money in building your business and establishing your brand, the last thing you want is other companies exploiting and profiting from your hard-earned work.
Trademarks are vital to protect your brand identity, stand out from your competitors, and prevent damage from invalid associations.
You can also generate maximum profit from these assets through licensing or, in some instances, “selling” these rights to others.
Here is what you need to know about trademarks and how they can protect your business brand.
What are trademarks?
A form of IP, a trademark is a sign that identifies and distinguishes your goods or services.
Trademarks can include:
- Words
- Logos
- Figurative marks
- Smells
- Colours
- Sounds
- Moving digital images.
Registering a trademark enables you to sell and license your brand, use the ® symbol, and take legal action against unlicensed use.
A trademark must be distinctive for the goods and/or services provided, and must not show information about the quality, quantity, purpose, value or geographical origin of goods or services.
You cannot register a sign as a trademark if it consists of or contains an emblem that has protection under an International agreement.
A company name may not qualify as a trademark, and a registered trademark does not automatically entitle you to use that mark as a domain name (the opposite is also true).
Choosing the right classes for your application
IP Offices worldwide use a trademark classification system – known as the Nice classification – that groups together similar goods or services into 45 different classes.
Each class provides a general overview to explain what it covers. This is only a general indication and does not include all the goods or services in that class.
Your trademark will only be protected for the goods and/or services you select, so it is essential to make sure you have chosen the correct class and terms when you apply. You cannot add extra goods or services after you have applied.
The World Intellectual Property Organisation (WIPO) provides a complete list of classes and which goods or services are included: https://nclpub.wipo.int/enfr/
The UK Government also offers a service to help you search for, and classify, the goods and/or service you need to apply for to register you trade mark: https://www.search-uk-trade-mark-classes.service.gov.uk/searchclasses
Registering trademarks
You can register a trademark either in the UK or throughout the European Union (EU) via an EU Trademark, valid in all member states.
If you want to protect your trademark in countries beyond the UK and EU, you will need to individually file a trademark application with each.
Alternatively, you can use WIPO’s Madrid System to file a single international trademark application and pay one set of fees to apply for protection in up to 130 countries. You can also use the Madrid System to modify, renew, or expand your trademark portfolio.
Trademarks registered with the UK Intellectual Property Office (UKIPO) or the EU Intellectual Property Office (EUIPO) are valid for 10 years and can be renewed indefinitely. However, a registered trademark can be revoked if it is not used for five years.
Palmers Solicitors can assist you with drafting effective trademark applications and registering in the relevant countries for your business.
Protecting your trademark
Even if you have not yet registered a trademark, your rights may be protected using the common law action of Passing Off.
In order to rely on this action, your business must be able to prove that the reputation it has built up has been detrimentally affected by another company’s use of its brand. This can be very difficult to evidence in practice.
It is far easier to take legal action against infringements of registered trademarks. Therefore, we advise businesses to seriously consider registration of their brand names and logos at the earliest opportunity.
If you find that a third party is using your trademark, a cease-and-desist letter may be enough to make them stop. You can also make an agreement to license your trademark.
However, mediation or legal action may be necessary to defend your IP if the other party persists in infringement.
Expert business and IP advice
At Palmers Solicitors, we provide clear and frank advice on protecting, licensing or transferring IP rights, and the action that should be taken if a dispute occurs relating to your brand.
As no single agreement will suit all circumstances, the team at Palmers Solicitors can advise businesses on what should be included.
Should a dispute arise, we are able to take immediate injunctive or other action on your behalf.
Contact us today for bespoke guidance on registering and protecting a trademark.