Registering with the UK Intellectual Property Office can protect your brand name, products, and innovations from competitors. Here’s what you need to know about trade marks, service marks and trade names.
How trade marks protect your business and image
As a small business, your name and reputation are your most valuable assets. Trademarking is a necessary step to protect them.
Trade marks can apply to the brand name, products, and services that your business offers. The trade mark identifies these assets as your company’s intellectual property, preventing other traders or businesses from using them or similar marks without authorisation. Once your trade mark is registered with the UK Intellectual Property Office , you will be able to take legal action against those who use or counterfeit your brand without permission, put the “R” symbol next to your brand, and sell and license your brand and services if you so desire.
You can, of course, defend your brand from those using the same or similar trade mark (called “passing off”) even before registering it is a trade mark. But given the burden would be on you to prove that the mark is indeed yours, that you have built up goodwill associated with the mark, and that your business has suffered harm due to the other part’s use of your mark, it’s far easier to defend a registered trade mark.
What’s in a trade mark…
A trade mark can be a name, logo, sound, symbol, colour, or any combination of these. Most importantly, it has to be distinctive. It cannot be a description of your good or services, a surname, a place name, a flag, a popular insignia, two initials (like XL), or a generic emblem or image. It also cannot be misleading (think false advertising), offensive (profane or pornographic), be three-dimensional, or so common as to be non-distinctive.
Restrictions on trade marks
Most importantly, of course, your trade mark cannot already be registered or too similar to an already registered trade mark. In order to avoid wasting time and money, search the trade marks database for identical or similar trade marks before applying to register your own. If you do encounter a similar mark, you can solicit a “letter of consent” from the owner, which you must include with your application. If you’re unsure of the legality of your trade mark, consider consulting with a certified trade mark attorney.
Making your mark on your business
When you apply for a trade mark, you will register it in one or multiple classes of the 45 available. There are 34 classes of goods and 11 for services. You will pay a base fee of £170 plus £50 for each additional class you will want to register.
You don’t need to wait to use the (™) or (℠) – “service mark” – symbols next to your brand. It is only the ® symbol – signifying successful registration – that can only be used once the mark is registered with the UK Intellectual Property Office.
After you apply , you will hear from the office within 20 days of submitting your application. If there are no immediate objections, the trade mark will be posted for two months, during which time anyone can contest your registration. Once the two months pass and any objections are resolved, you will receive a certificate for your trade mark.
Service marks: same function, different cases
A service mark performs the same function to a trade mark but covers services rather than products. For example, an accountant, party planner or bar would register a service mark, abbreviated as (℠). To register a service mark, simply select one or multiple of classes 35–45 when prompted. These final 11 classes are all for services. Otherwise, registration functions exactly the same. Once your SM has been approved, you can mark it with an ® sign rather than (℠).
A trade name is an official name under which your company does business. It does not afford legal protections or licensing rights like a trade or service mark, but it may nevertheless be important to register it.
Trade names are particularly essential for sole proprietors. In such cases, your businesses will be registered under your own name, but you will probably want another name – a trade name to do business under. In this case, you will need to register a trade name as a “doing business as” name. However, you will still file taxes under your own name, as your business will still be registered under it.
In the case of an LLC, it is useful to register an additional trade name if you want to do any portion of your business under a different name.
Be careful not to use trade names to identify products or services. In such a case, it could function as a trade mark or service mark, which could be considered unauthorised use of the intellectual property of someone else. You can register a trade name at the GOV.UK site.