If you are running a limited company or any other sort of business, then you will want to protect your interests. The last thing you want is someone stealing your ideas or making a profit off your good name. To get the best possible protection for your business it’s a good idea to file a trademark. Filing a trademark involves registering your mark with the IPO (Intellectual Property Office) also known as the Patent Office. However, most people soon find that filing a trademark is not as simple as it might first appear.
Trademark law is a complex thing. Governed by the Trade Marks Act 1994, broken down into over 100 sections; the law covers everything from filing a trademark, requirements of registration, reasons for rejection and enforcement after filing to name a few.
What is a Trademark?
The first place to start is establishing what a trademark is.
Section 1(1) states:
“In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.“
So, as you can see, a trademark can potentially consist of anything from a company name to a logo, slogan, brand or product name. Filing a trademark will lead to protection for one or more of these things as it is entered on the register and protected from use by anyone else.
Filing a Trademark – The Requirements
There are a number of rules that need to be satisfied before a trademark can be filed. The reasons for trademark rejection are specified by Section 3 of the act and these combined with the guidance laid down by the IPO make it clear that to carry out a trademark filing, the mark must be:
- Sufficiently Distinctive – In the sense that it stands out from other trademarks on the register and in the market place.
While it must not be:
- Illegal, offensive or deceptive in nature,
- Descriptive of your product/service or trade,
- Something which is customary in your line of trade,
- Listed as a protected symbol (see Section 4 of the act – things like Royal crests or National flags).
If these requirements are satisfied then the IPO are likely to accept a trademark registration as long as there is not already a mark on the register which it deems to be the same or too similar to the proposed trademark.
The IPO have provided a short list of what will not be deemed as sufficiently distinctive:
Filing a Trademark – The Classes
Because of the variety of businesses and the kinds of trademark likely to be registered, trademarks are broken down into various “trademark classes“. This means that when filing a trademark, you need to be sure to file your mark under the correct class. Classes are made up of either “goods” or “services” and in 45 sections. It is possible to register a trademark in one class or section when there is already a similar or identical trademark registered under another class. This is due to the fact that because of the nature of business the two trademarks (and their companies) will never interfere with each other. There are real life examples that you can see in our other article on the benefits of registering a trademark.
Carrying Out a Trademark Search
Before attempting to file a trademark, it is important to perform a trademark search. This involves examining the register to ensure that your chosen trademark is not already present. Carrying out a trademark registration without first carrying out a search could mean you end up losing your trademark filing fee when the registration is rejected by the IPO. TheCompanyWarehouse.co.uk offer a trademark search service as an optional extra when placing a company formation order with us (or as a separate service if necessary). Our service involves a carrying out a thorough check of the register and supplying you with a comprehensive report. We charge a small fee, but the cost is far less than you would pay if you attempted to carry out a registration without first ensuring the register was clear of similar or identical trademarks.
Due to the complex nature of the law, the various classes and the regulations surrounding trademark registration, it is highly recommended that you use a professional to help you file a trademark. TheCompanyWarehouse.co.uk has a dedicated trademark team who have the experience and knowledge necessary to give you a high quality service at a low cost. Thousands of companies and businesses over the years have used us to perform filing on their behalf. Our trademark registration service involves specific guidance on how best to protect your trademark, which classes to file it under based on your type of business and the activities you cover and more. We will then carry out the registration on your behalf, drafting the necessary paperwork and submitting the application to the IPO. We monitor your trademark through the whole process and once it is registered we send you the trademark certificate, as proof of complete registration.
Once the necessary paperwork has arrived with the IPO (and has been date stamped), Section 33 of the act says this is when the trademark filing is complete. Theoretically the trademark is then protected as long as it is not rejected by the IPO during the registration process. Filed trademarks deemed as acceptable by the IPO are placed on the trademarks journal which is published each week in order to allow potential objections to be submitted. Objections to registration can be submitted up to 2 months after publication. Once a trademark makes it through this period and is accepted on to the register it is then properly protected.
What Filing a Trademark Means To You
Filing a trademark has a number of benefits as you will have seen in our previous article. The first is that you can use the ® symbol, to denote a registered trademark (or RTM). You will then be able to take legal action against anyone attempting to use your trademark in their own business and thus protect your interests. Trademarks also have a value in the fact that they become a commodity that you can sell on. Filing a trademark does not however provide permanent protection. Trademarks need to be re-registered every 10 years in order to ensure lasting protection on the register.
Warnings From The IPO
The IPO have issued the following warning. Please be wary of these companies and be sure to use a professional trademark team like TheCompanyWarehouse.co.uk to complete your trademark filing.
Contact us today for further guidance or to carry out a trademark registration/search.