Trademarks

Can I register my trade mark?

You can register your trade mark if it's distinctive, as in, it isn't descriptive of the kind of goods you want to register it in respect of. For example, you can't register cheese for cheese. You can also register your trade mark if it doesn't conflict with earlier trade mark registrations of other people. You might have difficulties registering, for example, Coca-Cola for a soft drink, or something like that.

Why should I register my trade mark?

You should register your trademark to protect the investment that you make in building up a brand, building up the goodwill in the trademark that you are using. If you are building the goodwill and the name, you want to make sure that other people cannot take advantage of that by using your trademark. With the registration, you can take action to stop them.

How much does it cost to register a trade mark?

Typically the cost of registering a trademark might be a few hundred pounds or more in the U.K. But of course there is the option of international trademark protection as well. In fact you can register at the community trademark office for a community trademark which covers all the countries in the E.U. in a single registration, and that's likely to cost you in excess of one thousand pounds.

What do I need to include in the application?

You need to include the mark that you want to register. And you also need to include a specification of goods which describes the goods and services that you intend to use the mark in relation to.

How long does trade mark registration take?

Trademarks can be registered relatively quickly - in a few months, maybe even six months.

If someone copies my trademark, can I stop them?

Once you have a trademark registration, and if someone is using a trademark that is the same as yours in relation with the same goods or even if they are confusingly similar, then you can take actions against them to stop them. One example is that you can sue them.

How do I make my trademark distinctive?

Well, to make your trademark distinctive you can choose a ‘made-up word'. You are going to use trademark in relation to. For example, “Virgin” was a great trademark at the time when it was first used in relation to music originally. And it's continued to be used in relation to other goods and services across a whole range of industries.

How long does a trademark last for?

A trademark lasts for ten years, and then it can be renewed for another ten years, and another ten years, and it can go on forever.

Am I able to renew my trade mark?

Yes, you can renew your trademark for subsequent periods of ten years once it expires.

Who can object to my trademark?

When the Intellectual Property Office have accepted your trademark they'll advertise it. Then anybody who wants to object to your trademark registration has a period of three months to file an opposition. And then, even once your trademark has been registered, other people can argue that it shouldn't have been registered or it's become invalid and can apply to have it revoked.

Can my trade mark be removed from the register?

Yes, your trademark can be removed from the register if it is found that it shouldn't have been registered. If someone files an action for revocation and they are successful, or if it becomes a generic term that's used by everybody, and so ceases to be a trademark, and ceases to distinguish your goods from those of other people.

Can I sell my trade mark?

Yes, your trademark is a property right, which you can sell like you'd sell any other property right.

What is 'passing off'?

Passing off is a way of taking action against someone that's using your trademark and taking advantage of your reputation, even if you haven't registered your trademark. It's incredibly complicated to show and you have to show that you have a reputation and that it's been taken advantage of. The best thing to do is to register your trademark in the first place and then you need to go to that trouble.

What do I do if someone is using my trade mark?

Well, the first thing that I would say is take some advice from your trade mark attorney as to your options there. And then you may be able to sue them for trade mark infringement if they're using your trade mark in relation to the same goods that you have registered your trade mark, or even if those are similar goods.

Does a trademark give me monopoly rights?

Yes a trademark does give you monopoly rights, you will be the only person that can use that mark in the territory where you have the registration for the goods and services that you have registered.