What’s in a Brand? – Trademarks and the IPO
One of the hardest things for a start-up is being recognised in the market and building a brand. Trademarks are a vital part in setting up your brand’s distinctive offering. Registering brand trademarks with the IPO (Intellectual property Office) will protect your Identity and is a straightforward process, here’s how!
Issues regarding Trademarks are more common than you might think. In the last 15 months at Services Family Ltd, we’ve learnt a few lessons we thought worth sharing.
Getting your TradeMark – Registering your ‘mark’
A trademark is usually defined as a word(s), image or combination of the two within a ‘class’ or ‘classes’ of goods and services. The same name can be used in a different ‘class’ without conflict. Sometimes a mark can be used in the same class as another where the goods or services are clearly distinctive.
‘You need to think carefully about what to trademark and how to protect your brand’.
Registering your ‘mark’ does not need expert help. The IPO office website is straight forward, but you do need to think carefully about the following tests. The trademark needs to be:
- NON descriptive – this means it does not relate to the goods or services you are offering
- NON “customary” – this means it can’t be a word commonly used in your chosen market
Finally, it must not be offensive or use a national flag.
When making a paper or on-line application you must think about which classes your business now or may in the future operate in (these are all listed – most are clear, others can be a bit woolly). Widening the number of classes in your application will expand the breadth of the protection but may also increase the risk of others objecting. Note: registering in more classes also costs more.
Using the IPO’s ‘Right Start’ service is well worth the few extra pounds as they will recommend changes to your application and flag up any UK or EU/EU Nation potential conflicts.
Opposition to your application
Once you have first registered there is a waiting period of 2 months within which an opposition can be raised. There are three grounds:
- The trademark is identical, or
- The trademark is so similar it will cause confusion, or
- The new mark is registered in a different class but could cause the earlier mark an unfair disadvantage to other company or hurt their reputation.
“Being first holds the aces” – the holder/applicant of the first (more senior) mark, registered here or EU or US can oppose you if they can show that your use of a word, slogan, icon or logo will, or could, cause customer confusion because it is identical or similar to theirs.
The IPO will adjudicate on the objection during the waiting period at no cost. Or, you may get a legal letter ‘out of the blue’ from the other party – this happened to Services Family Ltd from a US start-up we’d not heard of and who filled a Mark in the US just weeks before us in the UK.
If you have pass the 2 month deadline without an objection, sadly you are not in the clear – it is just that the objector will have to use the law to force you to ”cease and desist” (the costs and time could hurt both parties). The same process applies if your mark is infringed and you object after a new registration. You are of course able to reach out and negotiate a commercial or practical settlement.
Intent to Use – What if I’m not ready to use my ‘marks’
If you register a trademark, you must have ‘good faith’ to use it within 5 years in every class its registered or you can lose it – use it or lose it!
You can also be restricted in a class to the goods and services you provide if your application was ‘too wide’ in description when you applied.
Finally, it is also important to consider where to be registered UKIPO for the United Kingdom. EUIPO for Europe, and UPIO for other countries around the world.
Trademarks are not a minefield; the processes are straightforward, but you will need to monitor any “trespassers” especially as you grow – there are service companies that will do that for you – and there is software e.g. jumptrademarks.com or trademark-watch
Want to learn more about brand, trademarks and business intellectual property from the UKIPO?
You can read more about how we protect our website in our legal section. Let us know if this has been useful and if you’d like another business blog by email.