A trade mark is a name or logo (or combination of both) which you use to distinguish your goods and/or services from those sold by another business. Most people think of company names or logos when they think of trade marks, but trade marks can actually cover a very wide variety of things, such as words, slogans, colours, 3D shapes and sounds.
If you register a trade mark, you’ll have the right to object to others registering or using similar trade marks to yours (in relation to similar goods or services). You can find our step-by-step guide to applying for a UK trade mark online here. You can also purchase this template as part of our Protecting IP and Confidential Information toolkit.
This blog sets out what trade marks are and how they are registered, how trade marks renew or expire, and the benefits of trade mark registration.
Trade marks – the basics
What a trade mark is
Trade marks are a type of branding used to identify a business as the source of goods and services, and distinguish their goods and services from others. For example, Pepsi and Coca Cola produce similar drinks, but they have trade marked their unique names and logos to create a clear brand identity and help customers distinguish their products.
As well as names and logos, you can trade mark things like:
- a combination of words and pictures (eg the Fujitsu trade mark);
- slogans (eg the Audi strap line ‘Vorsprung Durch Technik’);
- 3D shapes (eg the Toblerone box shape);
- colours; and
- sounds (eg the Metro-Goldwyn-Mayer lion roar which is played when their logo appears at the start of their films).
Registering your trade mark
In order for a trade mark to be given protection, it must be registered. This is done through an application process to the Intellectual Property Office (IPO). You’ll need to decide what mark or combinations of marks you want to register, as well as the class of products and services you want each trade mark to cover. Each online application in the UK costs £170 and an additional £50 will be added per category of goods and/or services you’re registering in. It’s a good idea to register your trade marks after you have settled on branding for your business and decided what categories of goods and services you are likely to provide.
The application may fail, or be objected to, if there’s a similar mark for a similar class of goods/services already registered. An application will usually succeed provided the mark is:
- capable of clear representation in your application;
- distinctive; and
- not a prohibited or objectionable trade mark type.
For further guidance on the application process, see our Q&A.
Once your trade mark has been registered, it will appear on the UK Trade Marks Register. You’ll then be able to stop anyone from infringing your rights by using your trade mark, whether by using it on identical or similar goods/services or by using it in a way that’s detrimental to your trade mark’s distinctiveness, its reputation or takes unfair advantage of it.
You can also apply to register your trade marks across the EU and internationally, depending on the needs of your business and where you would like the mark to be protected. See our Q&A for further guidance.
Expiry and renewal of trade marks
Once registered, you’ll have the exclusive right to use your trade mark for 10 years (from the date of your application), and you can renew it for a further 10 years as many times as you like. You’ll need to apply for a renewal during the last six months of the 10-year period.
If you don’t request a renewal of your trade mark in time, it’ll expire and will be removed from the relevant registers 6 months after expiry. You’ll lose the protection that registration gave you and other people may be able to use it without your consent. You may be able to reinstate the mark up to 12 months after expiry, but you’ll have to satisfy the IPO that the failure to renew was unintentional.
Benefits of trade mark registration
Registering a name or logo as a trade mark gives you the following key benefits:
- If someone else applies to register any branding that is too similar to your mark, for the same or similar goods or services, you can object. If the objection is justified, this will stop the other trade mark from being registered. It’s possible for two identical marks to be registered if the goods/services specified in each registration are different. For example, the same brand name may be registered twice if one is to be used for chocolate, and the other represents a car brand.
- If another business infringes your trade marked rights (for example by using a mark that’s very similar to yours, in order to promote their own similar product), you can take legal action to stop them, by obtaining an injunction or other remedy. This stops competitors from benefiting from the reputation of your brand, or devaluing your brand by associating it with lower quality products. Note that you can’t prevent competitors from using your branding to compare their product to yours, provided it is an accurate, fair and objective comparison.
- Registration adds commercial value by protecting your brand, making it more attractive for potential buyers and investors, and by adding a new revenue stream by allowing certain people to use your mark in return for a fee, through license agreements.
Registering a trade mark gives you certainty of protection over your mark, and allows you to legally pursue anyone infringing your rights.
Marion joined Sparqa Legal as a Senior Legal Editor in 2018. She previously worked as a corporate/commercial lawyer for five years at one of New Zealand’s leading law firms, Kensington Swan (now Dentons Kensington Swan), and as an in-house legal consultant for a UK tech company. Marion regularly writes for Sparqa’s blog, contributing across its commercial, IP and health and safety law content.