Registering a trademark for business

Friday 3 February, 2012

By Duncan Heaney - duncan@consumerchoices.co.uk

We look at how to register a trademark, and how to protect it too.

In business it’s important to stand out, and a trademark can help you do that. A trademark strengthens your brand identity - it reminds your customers that the goods and services they use are coming from you.

It also helps protect your brand, by giving you legal options should a rival try to impersonate your company.

What is a trademark?

A trademark is a sign or symbol that distinguishes your goods and services from those of other companies. A strong trademark can give your business a stronger brand identity - helping customers recognise and trust your business.

Trademarks can be:

• Words, phrases or slogans
• Logos or symbols
• A sign or type of packaging
• A noise or a jingle
• A colour
• A gesture
• A brand name
• A company name

Whatever form it takes, a trademark needs to be distinctive for the goods and services it’s used to represent. It also shouldn’t mislead people as to what it is you do.

If your business has built up a solid reputation, you get a certain degree of trademark protection from common law, but the truth is, it’s very difficult (not to mention expensive) to defend your trademark against infringement unless you’ve registered it.

Registering a trademark

To register a trademark, you need to apply to the Intellectual Property Office (IPO). Before you file an application, however, you need to make sure your trademark is available. Many names are already taken, so it’s important to check that someone hasn’t already claimed it.

The government’s Business Link website has a very handy company name and trademark checker, which should help you find out whether your trademark is available.

If you use a trademark that is the same or too similar to one used by another company, you could be sued for infringement. The penalties can be severe, so it’s best to research the market thoroughly before deciding on what you’re going to use.

Once you’re satisfied that your trademark is unique and distinctive, you need to fill in two forms - a TM3 form, and a fee sheet. The forms can be filed on paper or online. Doing it over the internet is the faster, cheaper option - the government will give you a £30 discount if you file online and pay the full amount at once.

But you will have to pay to register your trademark. The standard examination service is £200 - this covers registering your trademark for one class of goods or services. With the discount for filing online, it’s £170. Each additional class costs an extra £50.

Alternatively, you can choose the Right Start service instead. This allows you to defer half the payment until after the IPO has finished assessing whether the trademark can be registered. You make an initial payment of half the application fee - £100 - plus £25 for each additional class.

If you’ve got the cash, or want your trademark application assessed quickly, the Fast Track service is available. It costs an extra £300 on top of the standard £200 application fee (not including discounts). Additional classes cost £50.

Whichever you choose, be aware that the IPO doesn’t offer refunds, so you should only submit your trademark when you’re sure it’s what you want, and it’s not already in use.

The TM3 and fee forms can be ordered or completed on the IPO website.

How the application process works

The application process consists of three phases:

• Phase 1 - The application details are published on the IPO’s website.
• Phase 2 - Examiners from the IPO take a look at your application to decide whether it’s acceptable. They’ll be looking to see if there are any identical or similar trademarks already in use. If they’re satisfied, the application moves to phase 3.
• Phase 3 - The application is accepted, published and becomes open to opposition.

Assuming all goes smoothly, it typically takes four months for a trademark to be registered. Of course, if there are objections, it can be much longer.

Protecting your trademark

Your trademark is valuable and whatever it is, be it a logo, name or slogan, you’re within your rights to defend it if someone uses it without your permission.

If you haven’t registered your trademark, you can still defend it, although it can be difficult. To be successful, you need to prove that the general public associates your trademark with your products or services. You also need to prove that the other person’s product or service has been mistaken for your own and damaged your business.

A registered trademark sidesteps that problem because it gives you an automatic right to sue anyone who uses your trademark, or one that is similar. There’s no need to prove whether people associate a trademark with your business - the law is very much on your side.

If you sue someone for trademark infringement and win, you will be awarded damages and costs, and the offending party will be forced to stop using your mark.

Trademarks and domain names

It’s a good idea to register a domain name for your website that incorporates your trademark - it increases brand recognition, and helps customers find you online. For example - if your trademark is “ScrappyHats”, you might register the domain www.scrappyhats.com.

Unfortunately, registering a trademark doesn’t automatically give you the rights to that domain. Someone may have already registered it, and unless they’re using it to compete with you there’s often not much you can do about it.

You can only take legal action if you believe that someone is using the domain name to pass off their product or service as yours. Alternatively, someone may have claimed the domain name just to sell it back to you - a practice known as “cyber-squatting”. Again, you can take legal action against this.

If you have a dispute about a domain name involving your trademark, there are two services you should be aware of. For names ending '.uk' (for example, “.co.uk”), you should investigate the dispute resolution service for the UK on the website of registry Nominet.

For other domains, you should use the global dispute resolution service from the World Intellectual Property Organisation (WIPO).

Useful links

The government’s Business Link website provides a wealth of information about registering and defending your trademarks.

The Intellectual Property Office website allows you to submit a trademark online, and also provides guides and advice about registering your trademark.