Hannah Flowers, an associate solicitor in Mincoffs Solicitors' commercial services team, provides a brief overview on how trade mark registrations are made in the UK.
A trade mark is effectively an identifier which distinguishes one business’ goods and services from those of another and protects your brand identity.
Most people will be familiar with the common forms of trade marks, such as word and logo marks, however trade marks can also be used to protect less conventional signs, such as shape, colour and sound marks.
If your mark is capable of being represented clearly and precisely, it will likely be capable of registration and protection as a trade mark (subject to it not falling foul of the “absolute” and “relative” grounds of refusal, discussed further on in this article).
Consider what goods and services the mark will be used on
When applying to register a trade mark, an application must be filed against certain classes of goods and services, known as a class specification. A trade mark can be registered against multiple classes however the more classes included, the more expensive the application will be. Goods and services are classified under a system called the Nice Classification System, totalling 45 different classes. Ensuring you have chosen the correct classes in your application is crucial as this ultimately defines the scope of your protection.
Check your mark is available to use
It is important to assess whether your mark is available for use and registration by undertaking a trade mark clearance search, which will highlight any pre-existing trade marks which may conflict with yours. Whilst undertaking trade mark clearance searches prior to applying for a trade mark is not mandatory, it is arguably one of the most important steps to take when looking to secure a trade mark for your brand. Trade mark clearance searches can help businesses avoid legal disputes, have to deal with a potential rebrand or have their application rejected.
File an application through the UKIPO
Once you have undertaken trade mark clearance searches and are content your mark is available, a trade mark application can be filed with the UK Intellectual Property Office (UKIPO) -the government agency responsible for intellectual property rights in the UK. When a trade mark application is filed, it will firstly be examined by the UKIPO to ensure that it is inherently capable of being protected as a trade mark and that it does not fall foul of the absolute and relative grounds for refusal of registration. The absolute grounds cover things such as the mark lacking distinctiveness, being descriptive of the goods and services or being contrary to public policy or morality. The relative grounds cover situations where the application conflicts with earlier existing trade mark registrations.
Registration
If you are successful in obtaining a trade mark registration, your business will be able to reap the legal and brand protection benefits a trade mark provides. Your registration can also last indefinitely, provided it is renewed every 10 years, which can add a great deal of commercial value to your business.
More than just a brand or logo, a trade mark is your business’ identity, reputation and what sets you apart from others. Mincoffs Solicitors’ commercial services team have vast experience in securing and protecting trade marks in the UK and overseas, along with licensing and assigning, and dealing with trade mark disputes.
To speak to an intellectual property lawyer, call our commercial services team on 0191 281 6151 or email Hannah Flowers at hflowers@mincoffs.co.uk
www.mincoffs.co.uk