The Trademarkroom is led by Jane Coyle – a qualified solicitor, who also works at Lawdit Solicitors, a firm regulated by the Law Society of England and Wales.
Jane and her trusted team have been filing trademarks globally for more than 15 years. The Trademarkroom is a family owned business with its headquarters in the legal district of Southampton. The business also has offices in the New Forest and London. The Trademarkroom’s client group is drawn from the national and international business communities.
Now members of New Forest Business Partnership, Jane and her team wish to provide this simple but useful guide to Trademarks which will help you, just as they have with the following New Forest businesses
- Vibrant Forest Brewery – A Lymington based company that has rapidly expanded. With greater business exposure they realised the importance of protecting their brand with a registered trademark. We stay in regular contact and have even enjoyed their beer!
- Two42 Theatre – A new theatre company based in Brockenhust. With a successful Edinburgh Fringe Festival in 2015 already under their belts, big things are expected for the future. As with Vibrant Forest, a growing success meant greater brand exposure- increasing the need to protect their trademark.
If you have a business, you have a trademark and if you’re serious about your brand, you should protect it with a registered trademark.
What is a trademark?
Your trademark is the symbol your customers use to identify and distinguish you from your competitors. Many New Forest business owners will have quirky/original names for their business/service or product but have you considered brand protection? Every business needs to have a registered trade mark which when registered will allow you and only you to use it! With Christmas approaching many brands will gain more exposure. Don’t let others benefit from your hard work. Filing a trademark makes it easier to stop third parties using your brand without your consent.
If you are successful in your application a registered trademark will allow you to:
- Take legal action against anyone who uses your brand without your permission, including counterfeiters
- Put the ® symbol next to your brand – to show that it’s yours and warn others against using it
- Sell and license your brand
What Can’t I register as a trade mark?
There are a number of reasons a trade mark application may be refused (we will guide you through this) but here is a summary:
- be offensive, e.g. contain profanities or other offensive language
- Describe the goods or services it will relate to, e.g. the word ‘Mobile application’ can’t be a trade mark for a mobile application!
- be misleading, e.g. use the word ‘100% beef products for goods that don’t use 100% beef.
- be a 3-dimensional shape associated with your trade mark, e.g. use the shape of a phone for a phone!
- be too common and non-distinctive, e.g. be a simple statement like ‘we are the cheapest’
- look too similar to state symbols like flags or hallmarks.
What Can I register as a trade mark?
Your trade mark should be unique and it can include any of the following or a combination:
A made up word or a word we are not familiar with can be a great trade mark to set you apart from your competitors- think Wagamamas! You can also use every day words such as Apple (it’s not descriptive of computer services!)
How do I know my trade mark is available?
Before filing a trade mark application it makes sense to check if it’s free to use. If you file a confusingly similar mark in similar goods and services you may be committing trademark infringement. You may have to withdraw your application, re brand and even face being sued for damages. You can search on the UKIPO website https://www.gov.uk/search-for-trademark or you can instruct is to carry out a full trade mark search and advice report. Whilst this does not eliminate any potential risks it does give us a good idea on how successful the application will be and what problems you might encounter.
How do I file an application?
If you are trading in the UK, we can file a UK trade mark application on your behalf. We will need:
- The name of your brand (or a graphic representation if you have a logo or it’s represented in a stylised form)
- The name and address of the owner (this can be an individual or a company)
- A full list of goods and services i.e. what you do. Don’t worry about this aspect if you are unsure- we will fully draft the classes for you. This will be based on a discussion with your about your business so nothing is missed. You cannot add classes once it has been filed.
Your trade mark is examined at the UKIPO and the examination report sent back to us in approximately 3 weeks. If successful it will be forwarded to a 2 month publication period whereby a third party can object. If no oppositions are raised your mark will be automatically registered and you will receive a certificate. The process takes between 3-6 months. A registered trade mark lasts for 10 years.
If you wish to expand your brand overseas- just let us know, we can file anywhere in the world! Remember though that trademarks are territorial so a UK trade mark will protect you in the UK only.
What if a third party is using my brand without my permission?
If you feel you brand is being used without your permission and you have tried to resolve the dispute yourself without success, it’s best to seek legal advice.
Each circumstance is unique but depending on a number of factors you may be able to stop a third party from using your name. If it’s not registered it may come down to who was using it first (this can still be a factor with registered trade marks). If the facts show you have a strong case a cease and desist letter may be sent detailing that the alleged infringer must stop and the consequences of failing to doing so.
If your brand is capable of functioning as a registered trade mark then the benefits of filing are many. You have invested time and money into your brand and you should protect it. Don’t let others benefit from your hard work!
We love hearing about new business ideas, start-ups, products or services. Let us help you protect what’s yours…
Intellectual Property Law Consultant