The failure to secure a trademark can lead to serious ramifications, including the inability of the company to expand into other products and services or territories.
1. What signs can be registered as a trade mark
A trade mark is a sign that is capable of distinguishing the goods or services of one company from those of another and can include words, logos, colours, sounds or shapes. The shape of the Coca Cola bottle for beverages is one, or the particular shade of green for fuel which was registered by BP.
2. What signs can’t be registered as a trade mark
If they are descriptive of the goods or services themselves then they are not capable of distinguishing the goods or services of one company from another. Examples include: (a) marks which are customary in the relevant field, (b) shape marks where the shape is typical for the goods in question, functional or adds value to the goods; and (c) marks which are offensive. Marks that have been refused registration on one or more of these grounds include ‘Toy Direct’, for toys, and ‘Tasty Food’ for foodstuffs.
3. Why should I register a trade mark
A registered trade mark will make it far easier for you to prevent third parties from using an identical or similar mark rather than relying on any rights in passing off, which is a far more limited right.
Furthermore, by securing a broad trademark registration for goods or services not offered presently by you, you will place yourself in a far better position to move into those other areas in the future.
4. Should I have an availability search conducted first
A trademark does not give the proprietor the right to use the mark. It is therefore important to carry out a full trademark availability search otherwise there is a risk that a third party may challenge your use of the mark in the future. The company would then need to withdraw its new brand following complaints from third parties with prior rights. This can prove expensive and embarrassing.
5. Where should I file the trade mark
As trademark rights are territorial, it is important that you register your mark in your key territories and in countries you may move into in the future – or you risk a third party registering similar rights in those territories and then preventing your expansion into those countries.
If you wish to cover the UK, you can file either a UK trademark or a community wide trademark covering all EU member states. In broad terms, a community trademark will cost around twice as much as that of a UK mark but will prove invaluable if you intend to trade across the EU.
6. How long does a UK or community trademark take to be registered
A UK application takes approximately three to four months if there are no objections or oppositions. A community application takes approximately six to nine months.
7. How long does a trademark last
In both cases, a trademark can last for ever but it will need to be renewed every ten years by paying the prescribed fee.
8. What is the cost of a trademark
This depends on what mark you file and how many classifications of goods and services you wish to cover. For example, a UK trademark covering one classification of goods would cost 620 plus VAT. This figure assumes that there are no objections by the registry or oppositions by third parties. In contrast, a community one in three classes will cost around 1,500 plus VAT.
9. When can a trade mark be revoked for non-use
If a trade mark has been registered for five years or more and has not been used during that period, it can be revoked by a third party for non-use in relation to the goods and services for which the mark has not been used.
As it is common to file a trademark for a broad range of goods and services that the proprietor may not intend to immediately use the mark for, it is important to re-file every five years.
10. How do I monitor if another company is seeking to register my mark
It is important to ensure that you have a watch notice in place to inform you if a third party has sought to register your brand or a similar one anywhere in the world. The cost of this exercise can be as little as 100 per month plus VAT and will enable you to take timely action to oppose the mark.
Paul Cox is a member of the franchise group at Clarke Willmott.