The importance of making your (Trade) mark
25th February 2014
Every business uses a name to help its customers identify it and to differentiate it from its competitors.
Many businesses also use brand names in relation to particular products or services they offer.
However, not all businesses bother to register their business name or product names as trade marks.
Here are 10 reasons why you should consider doing so:
1. A registered trade mark is an exclusive right
If you register your business or product names as a trade mark you are granted an exclusive right to use that trade mark in relation to the particular types of products or services which you have listed in your trade mark application.
This means that you can prevent anybody else from using an identical trade mark in relation to those goods or services.
You can also prevent others from using business or brand names which are similar and which may confuse your customers.
In short, it is much easier to prevent others from using identical or similar business/ brand names if you have registered them as a trade mark.
2. A registered trade mark acts as a deterrent
If your business or product name is registered as a trade mark this is a matter of public record which is recorded on the Trade Mark Register.
Many companies will search the Trade Mark Register before adopting a new brand name and will actively avoid using names which are already registered.
So your trade mark will deter others from adopting similar brand names, without you even knowing it!
3. You can use the ® symbol
If you have registered your name as a trade mark, you may use the ® symbol to put others on notice that you have registered rights. This may further help to deter your competitors or others who know about your business from adopting similar names.
You should never use the ® symbol if you do not have a registered trade mark, as this is an offence.
The “TM” symbol is sometimes used in relation to unregistered brands to indicate that they are the subject of a pending trade mark application, or that they enjoy a reputation and so-called “unregistered rights”.
4. A registered trade mark is a business asset
A registered trade mark is proof that you trade mark is protected. Registered trade marks are also recognised as “property” under the Trade Marks Act 1994 and can have substantial value in their own right.
For instance, the Coca Cola brand is reputed to worth more than $70 billion.
5. A registered trade mark can be sold
Since a registered trade mark is an object of property which can have a value it can be bought and sold with or without the business in respect of which it has been used.
It is more difficult to sell an unregistered brand name since its legal status is less certain. In addition, under English law, the rights or “goodwill” associated with unregistered brand names can only be sold together with the associated business.
6. A registered trade mark can be licensed or even mortgaged
Registered trade marks can be used and commercially exploited in a wide variety of ways.
For example, you can allow others to use your trade mark by granting them a licence in return for payment of a licence fee or royalty.
Franchises (such as the Burger King franchise) will typically involve a licence of a registered trade mark together with a permission to operate a particular type of business under that brand name.
It is even possible to use a registered trade mark as security when taking a loan with a bank.
7. A registered trade mark can be used against counterfeiters
The Trade Marks Act 1994 creates a number of criminal offences where registered trade marks are used in relation to counterfeit goods.
This allows Trading Standards Officers and/ or the Police to bring criminal charges to prevent counterfeit goods from being manufactured or sold.
8. Registered trade mark protection can last forever
Unlike most other intellectual property rights such as patents (which can only last for 20 years), registered trade mark protection can last forever provided that you renew your trade mark every 10 years.
The first ever trade mark in the UK was registered in 1876 for the Bass beer brand and it is still in force today.
9. If you do not register your brand, somebody else may do so
If you do not take steps to register your business or product names, there is a risk that somebody else may beat you to it!
This can happen by chance, where another company adopts and registers a similar brand name by coincidence.
However, it is not uncommon to find cases where competitors or business partners have registered a brand owner’s name as blocking tactic or just to cause trouble.
In our experience, it is particularly important to take steps to protect your brand at the earliest opportunity if you are looking to appoint distributors or resellers to sell or promote your products and services.
Although steps can sometimes be taken to recover ownership of your brands in these situations, this is not always possible.
In addition, taking such steps is almost always more costly than it would have been to register your own brand name in the first place.
10. It may be cheaper and easier than you think
Registering trade marks in the UK is now relatively quick and cost-effective.
The fees to be paid to the Trade Mark Registry start at just £200 or £170 for online trade mark applications.
If you use your brand internationally, registered trade mark protection can also be secured in a cost effective way, throughout Europe, by applying for a Community Trade Mark.
It is also possible to seek trade mark protection across wide range of countries by making a so-called International Application using the Madrid system.
However, to minimise the risk of costly problems arising with your application, we recommend that you use the services of a Chartered Trade Mark Attorney or experienced intellectual property lawyer.
How Ward Hadaway can help
Ward Hadaway’s Trade Mark team consists of Chartered Trade Mark Attorneys and specialist intellectual property solicitors with significant experience of filing and handling trade mark applications for its clients.
We offer a competitive fixed price trade mark search and filing service and are able to advise on all related issues such as trade mark disputes and licensing arrangements.
For more information, please contact Bill Goodwin.
Please note that this briefing is designed to be informative, not advisory and represents our understanding of English law and practice as at the date indicated. We would always recommend that you should seek specific guidance on any particular legal issue.
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