Registering a trademark is one of the most effective ways to protect your brand, giving you intellectual property protection. A registered trademark is a valuable commercial asset, granting you exclusive rights for the mark, gives you protection from infringers and is renewable indefinitely. When you register your trademark, you’ll be able to:
· Take legal action against anyone who uses your mark without your permission
· Put the ® symbol next to your mark, to prevent anyone else from using it
· Sell and license your brand
1) You must check if your brand qualifies to be trademarked
You must look at what you can and cannot register. You may want to register words, sounds, logos, colours or a combination of these. Your trademark may not:
· Be offensive – cannot contain any swear words, racial terms or explicit images
· Describe the goods or services it will relate to – e.g. ‘cakes’ cannot be a trademark for a baking company
· Be misleading – e.g. use the word ‘organic’ for goods that are not organic
· Be a 3-dimensional shape associated with your trademark e.g. the shape of a cake when selling cakes
· Be too common or non-distinctive
· Look too similar to state symbols (e.g. flags) – you must look at the World Intellectual Property Organisation Guidelines
If you have similar versions of your trademark, you can make a series application for up to 6 marks – but they must all look sound and mean the same. You must also search the trademarks database to ensure there are no existing trademarks that are identical or too similar.
You cannot change your trademark once you’ve applied, and the fees are non-refundable, so it is important to make sure you have researched all of the above.
2) Apply to register your trademark
This may be done on the http://www.gov.uk website, by you or someone who is authorised to act on behalf of you.
You will need to have details of what you want to register, for example, a word, slogan, logo or illustration, and the trademark class you want to register it in (https://www.gov.uk/guidance/how-to-classify-trade-marks)
3) Respond to any objections
You will get an Examination Report with feedback usually within 8 weeks, letting you know whether the application meets the guidelines and will be successful.
If there are any problems, you will have 2 months to resolve them. If there are no problems, the application will be published in the trademark journal for 2 months where anyone can oppose it. If the Intellectual Property Office tells you your application was opposed, you can either withdraw your application, talk to the person or organisation that opposed it or defend your application. You cannot continue your application until this matter is resolved.
Once your trademark has been registered and once any objections are resolved, you will get a certificate confirming this. You will now have the exclusive rights to the mark. You can object other people’s trademarks if you think they are too similar to yours and you can sell or licence/your trademark.
Registering a trademark abroad
The application process above applies to registering a trademark in the UK. To register a trademark abroad, you may apply to the trademark office of that particular country, but the rules are subject to each country.
For example, Ghana and Kenya are part of the Madrid Protocol Agreement, so you can make an application through the UK office and receive an international trademark provided your UK application was less than 6 months ago.
If you are unsure about anything written in this article, or to speak to a lawyer, give us a call.