Trademark Registration Answers

1. What is a trademark?

   According to Section 1(1) of the Trademarks Act 1994, a trademark is:

   "...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"

   Therefore a trademark may include slogans, logos, company names, brand names, product names and more.

2. Why do I need to protect my trade mark?

   There are many reasons to protect your trade mark. For some companies their trade mark may well be the key to their business. They have a name that stands out and is well known and need to protect it, preventing people from abusing it. Registering a trade mark does just that. Once registered you can take legal action against anyone attempting to use your trade mark as part of running their business to stop them damaging your goodwill. See our blog article for the other benefits of trademark registration.

3. How do I register a trademark?

   In order to register a trademark, you need to make an application to the Intellectual Property Office (IPO). Due to the complexities of Trademark law, the various trademark classes and other related matters, most people find it preferable to use an agent to carry out a professional trademark registration. Before you get started it is advisable to carry out a trademark search.

4. What is a trademark search?

   A trademark search is a service our legal trademark team undertakes whereby they take the basis of your trademark, as much information as possible from you and examine the trademark register to see if your chosen trademark is already registered or if there is one similar already on the register. A comprehensive report is produced with relevant guidance on trademark registration. It is always preferable to carry out a trademark search before attempting to register a trademark as if a registration is rejected then you will lose your application fee. It is also advisable to do a trademark search when carrying out a company formation. Just because a company name is not on the companies house register does not mean it has not been registered as a trade mark. If you register a company name with a name which is already registered as a trade mark, you risk facing legal action at some point in the future. If both registers are free, it is highly recommended that you register your company name as a trade mark to stop other people from doing so.

5. What are trademark classes?

   Trademarks are broken down into so called trademark classes. These classes are split into categories of goods and services and then into various subclasses. The idea is that a trademark will be registered within a specific class and the law will allow another trademark to be registered in a different class with the same name. As long as there are no overlaps, these two trademarks (and their businesses) will not interfere with each other. The best example of this is POLO which is registered under one class for the mints and a completely different class, by a different company for a type of car. Our trademark registration team will be able to give you guidance on the best classes to register your trademark under to get the best possible protection for your trademark.

6. What do the R and TM symbols mean?

   TM is used to show that a name (or symbol/logo) is being used as a trademark. However, it does not necessarily mean that it is registered as a trademark. The R symbol on the other hand is used to show that a trademark has been registered. Using this symbol when the trademark is not actually on the register is deemed to be a criminal offence by S.95 of the Trade Marks Act 1994. The law is intended to protect those who have carried out a trademark registration as much as possible.

7. How long does the trademark registration process take?

   This varies according to individual circumstance and the backlog at the IPO, but trademark registration can take anywhere up to and beyond 6 months. However, once the appropriate documents arrive at the IPO and are dated stamped they are deemed as filed and protected as far as the registration process is on a first come first served basis. This means that no one should be able to beat you onto the register by submitting a registration after that date. It is still possible that a trademark could be objected to while it is published in the Trademarks Journal.

8. How much does trademark registration cost?

   The cost of trademark registration varies according to the classes you wish to register your trademark under. The more classes, the better protection you get for your trademark. Our trademark registration team can give you guidance on which classes to register under, based on information provided by you about the nature of your business and the trademark itself.

9. Will my trademark be protected forever?

   Trademark registration only lasts for 10 years and if you wish to maintain the protection, you will be expected to carry out another trademark registration once this time is up.

10. Can I get my money back if my trademark is rejected by the IPO?

    No. There are many reasons why a trademark might be rejected by the IPO and their decision is final. Money paid for a trademark registration is not recoverable. This is the main reason why we always recommend that clients do a trademark search before attempting a trademark registration.

11. Are there any requirements about what a trademark can or cannot be?

    Section 3 of the Trade Marks Act 1994 gives a list of criteria under which a trademark registration might be rejected. The most important rule is that the trademark is sufficiently distinct. This means that it must stand out enough from the others in the market and on the register in order to be recognisable and distinguishable. At the same time, it must not be descriptive, illegal, offensive or deceptive, it must not be something which is customary in your line of trade and it must not be a protected symbol (coat of arms or a national flag). As long as it satisfies these criteria, a trademark should be able to be registered as long as it is not rejected for any other reason.

12. Can I change my logo or trademark after registration?

    No. In order to do so, you will need to carry out a new trademark registration. It is therefore important to ensure that you are 100% happy with your trademark before attempting a trademark registration.

13. I have registered my company/business name as a domain name. Do I need to register it as a trademark as well?

    Yes. Carrying out a domain name registration to get your business/company name on the World Wide Web is not enough to stop someone else from registering it as a trademark. In fact if they do so they could prevent you from registering it as a domain name in the first place or take action to get you to hand over control.

14. I have registered my name as a company name. Do I need to register it as a trademark as well?

    Yes. Completing a Company Formation to register a new limited company is enough to stop other people registering a business under the same name, but not enough to stop others registering your business name, logo or slogan as a trademark. So it is important to protect your interests by completing a trademark registration as soon as possible.

15. What is a CTM?

    A CTM is a Community Trade Mark. Community Trade Marks are those which are registered within the European Union. If you intend your business to trade within the EU then you should consider registering your trade mark in this way. CTM registration is carried out by filing a trademark with the Office for Harmonization in the Internal Market. We provide a Community Trade Mark registration service which will get your trade mark filed so it is valid in all 27 EU countries. If you need guidance please contact our trade mark registration team on 0800 0828 727.