You can protect your brand in two ways in the UK:
(a)by registering a trade mark with the UK intellectual property office (IPO) and paying a fee. This can either be undertaken by trade mark agents and can cost £1,500–£2,000 for an uncomplicated registration, or some smaller businesses choose to apply to register their brand themselves directly through the IPO’s website which currently costs around £200; and
(b)by relying on the UK laws of ‘passing off‘ (these rights arise automatically under our laws and there is no fee to pay).
- Firstly, conduct a search of Google to see if any third parties are trading with your brand and how similar their products are.
- Next, you need to check the official IPO online register at www.ipo.gov.uk/tmtext.htm to check that no third party has registered your chosen brand with them in the same or similar sector.
- Assuming your searches are clear, you choose in which ‘classes’ (business sectors) you want to protect your brand, fill in the application form and pay the filing fees. It is best to limit your application to classes in which you are reasonably likely to use the mark because otherwise you will have more trouble getting it registered and managing it after registration. The fees also increase depending on how many classes you choose.
- Once you file the application online, the registry will firstly check it meets its basic requirements for a trade mark (it will not permit any applications that are too descriptive of the product or service they represent). As a general rule, the best brands have no dictionary meaning such as “Volvo” or “Rolex” because they are so distinctive.
- The registry will then publish your application in the official trade marks journal. This gives the opportunity to third parties who feel your brand is too similar to theirs to object. Overcoming objections will add costs to the process and trade mark professionals will usually need to be engaged to deal with this. The registry then decides if the application should succeed or fail.
- The whole process takes about 6 months but it can be longer if you come across third-party objections.
Does this give me global protection?
No. Each country in the world has a similar trade mark regime. To protect your brand globally you’d have to register (and use) the brand in all the different countries in the world; this would be expensive and time-consuming to manage. Many smaller businesses will pick a small number of territories they are focusing on and apply to register them there.
There is also a ‘European’ trade mark (known as a ‘Community trade mark’) which protects a brand across the whole of the EU. It is slightly more expensive to apply for than a UK mark but can be useful if you are planning on selling to other countries in the EU. The downside is that there is a greater likelihood that your brand (or a similar brand) has already been registered in one of the other countries.
Managing your trade mark portfolio doesn’t end with registration. You will need to keep an eye on third parties applying for similar marks (this is where trade mark professionals can be helpful as they offer a ‘watching service’) and you need to enforce your rights when they are being infringed or you may risk losing them. You also have to renew your trade mark every 10 years and it can be taken away from you for ‘non-use’ in certain circumstances if you are not using it.
Should I save money and rely on passing off?
Without a registered trade mark, your brand may still have ‘unregistered trade mark rights’ and be protected in the UK by the laws of ‘passing off’ if you can prove that you have enough ‘reputation’ in your brand and that the other person’s use of that brand is confusing your customers. Proving confusion is more difficult than proving a third party is using your brand in the same sector for which you have registered it and so a trade mark is a more reliable method of protecting your brand.
In addition, ‘passing off’ is an English law remedy so does not protect your brand in other countries, although some other countries have similar concepts of ‘unfair competition’.
This article is for general information purposes only and does not constitute legal or professional advice. It should not be used as a substitute for legal advice relating to your particular circumstances. Please note that the law may have changed since the date of this article.