TRADE MARK REGISTRATION

When considering trade mark registration it is important to understand that the concept of trade mark protection extends to the provision of services as well as goods and brand names.

A trade mark is a sign or text capable of being represented graphically and which distinguishes goods or services of one undertaking from those of another undertaking. A trademark may consist of words, designs, logos or combinations of letters and/or numerals. It is also important to realise that some words or phrases would not be considered suitable for registration as trademarks, if they are entirely descriptive of goods or services.

For more detailed information on trade mark registration, details on the range of trade mark services we offer and a convenient online application form please visit the Trade Mark Registrations Online site.

If you have already ordered the trade mark registration service you will need to fill out a
Trade Mark Application Form please click here to do so now.

Why register a trademark?

In today’s competitive and global market place, protecting your business identity has become one of the most important steps you can take. Advances in IT and the Internet mean that more information is freely available and in the public domain. As a consequence it is now much easier for a competitor to take advantage of your hard-earned reputation. If you need to create a brand name or conduct expensive marketing campaigns and advertising, it is often wise to protect your identity with a UK registered trademark.

If you do not register a trademark it is easier for competitors to use a brand name or business logo similar to your own, meaning that they can reap the benefits of your hard work. However the problem is not only caused by those actively seeking to steal copyright. If you do not possess a trademark, infringement may occur innocently. Whilst you or your company has the natural right to copyright in law, legal action to prevent such an infringement known as “passing off”, can be expensive and time consuming.

Passing Off

Passing off is the use of an unregistered mark such that the third party using the mark passes off, or represents, the goods or services as their own. You can take common-law action to prevent passing off, but there are a number of factors that you must consider before you can prove passing off. As the owner of an unregistered mark, you must be able to prove that:

  • you trade in the goods or services to which the particular mark applies
  • the public associate your mark with the goods you produce or the services you provide
  • you have a reputation in those goods or services and therefore goodwill is attached to the name
  • there is a likelihood of deception
  • you have suffered, or are likely to suffer, substantial damages to your goodwill as a result of the third party passing off your mark

It can be very difficult and expensive to prove passing off, so it would be to your advantage to register your mark. If your mark is registered, the "passing off" would constitute infringement, for which you can take legal action.

How is my trademark registered?

When you register a trademark in the UK the process is completed through the UK Intellectual Property Office, formerly know as UK Patent Office, giving the registrant far wider protection and making any infringement much easier to deal with.

The application generally takes around six months to complete. Once a trademark application has been accepted by the UKIPO, it will be advertised in the Trademarks Journal, which is published every Friday on the Patent Office web site. The Journal advertisement will last for a period of three months, which allows any interested parties with justifiable cause to oppose the registration of a trademark. Opposition is the legal procedure, which allows anyone to try and stop the registration of a trademark. They may only do this by filing the appropriate documents with the Patent Office.

The most common reasons for someone wanting to oppose the registration of a trademark are:

  • They think the trademark is one which is not unique to the applicant and should be free for everyone in that line of trade to use
  • They own a brand name (which does not have to be a registered trademark) which is the same as, or similar to, the applicant's mark.

If the formal search is positive and the subsequent application is opposed following the advertisement in the Trademark Journal, we reserve the right to charge additional fees to handle any matters arising from the opposition. If no oppositions are received, the trademark will automatically become registered.

For more detailed information on trade mark registration, details on the range of trade mark services we offer and a convenient online application form please visit the Trade Mark Registrations Online site.

If you have already ordered the trade mark registration service you will need to fill out a
Trade Mark Application Form please click here to do so now.

 

Company Registrations Online Limited is a company registered in England and Wales with company number 3838753, VAT registration number 732 4047 59

Telephone: +44 161 440 8884     Fax: +44 161 439 4484     Email: info@companyregistrations.com