If you're trading in a competitive market alongside lots of other businesses, you might find it worthwhile to get legal protection for your name or logo to prevent other businesses from copying them or to save rebranding when you encounter a business with same name. Mark Kingsley-Williams, founder of Trade Mark Direct, explains the ins and outs of trade marking.
1. What is a trade mark?
A trade mark is a legal means of identification to distinguish a trader and his or her products from those of other traders. It can be a word, letters, a logo, a shape, numerals, a signature, and even sounds and smells, or a combination of these.
You can trade mark your name or the logo or both together as a single application. Each option gives a different degree of protection to your brand. Registering a trademark grants the owner exclusive rights to the mark within the specified industry.
2. What does a trade mark do for your business?
Successful businesses have a strong brand name and logo. Having a good trade mark for your brand name / logo protects the business and adds value by helping it to stand out from the competition.
3. Does Companies House registration count?
No, it doesn’t. Registering company names at Companies House does not provide trade mark protection. Similarly registering a domain names does not provide any trade mark protection.
4. Why is it important to have a trade mark?
A trade mark protects your business and livelihood. If you don’t register your trade mark, someone else could, and could force you to change your name!
Rebranding a business can costs thousands of pounds and means losing the awareness and loyalty that has been built up. In addition, if the website domain needs to be changed this can be doubly harmful as search engines will need to ‘find’ your site all over again.
Most businesses are aware of their brand or branding and rightly see it as their 'corporate' image. They know it is of vital importance to their business, but often do not realise how vulnerable they are without one.
5. What are the benefits of having a trade mark?
As well as protecting your business identity, it also allows you to bring an action for trade mark infringement against anyone trying to use your name for similar goods. This is important as it is notoriously difficult and expensive to succeed in a ‘passing off’ action if you only have an unregistered trade mark.
6. How do I go about getting a trade mark?
Make sure that there is not a similar name, symbol or phrase already trademarked or in widespread use. To do this, you can search the Intellectual Property Office’s (IPO) database
. This can be time-consuming, but it is essential to ensure that you are not inadvertently taking someone else’s trademark. It should be noted, however, that DIY searches on the IPO will only bring up direct matches, so it is not foolproof. So using an expert agent can more than pay for itself in a short time.
7. Why traders online are at even more risk?
Almost all businesses have a website and therefore an online footprint, which means you are vulnerable to another company stealing your identity or taking on a similar identify to confuse your customers. It is also very common for competitors to use a URL similar to yours to divert traffic away from your site to their own.
Until recently, a company in say Portsmouth called ‘Wrights Roofing’ and a company in Newcastle called ‘Wrights Roofing’ could probably both trade successfully, and without confusion, as they traded and advertised locally. Now an internet searcher typing in ‘Wrights Roofing’ will see both companies appear but will not know which is the company they are looking for. Businesses are a mouse click away from each other. If one of the companies decides to trade mark, the other will be forced to rebrand.
8. Can two companies hold the same name?
Yes, trade marks are registered by class and there are 45 different classes.
9. The best names to trade mark?
Make sure your trade mark is distinctive. Made-up words are arguably the most distinctive and are one of the easiest ways to ensure a successful trade mark application - for example, Yakult.
Don’t be too literal or descriptive with your company or product name. Names such as Sweet Cakes for a patisserie won’t be accepted, nor will misspelt words such as Letha Bagz. You also can’t register a trade mark that includes a famous name or brand, for example MICROSOFT for a clothing company.
10. Can I use the TM symbol?
Whilst your name and logo are unregistered, you can put the TM symbol for an unregistered trade mark next to them. You can also use the copyright, C, symbol next to your logo. However, it is a criminal offence to use the registered trade mark symbol, R, next to a word or logo that is not registered. Using the registered trade mark symbol will warn competitors that your mark is registered and also make them less likely to challenge it.
11. Trade marks are important assets.
They add significant value to a brand and can, for instance, be included as such on a company's balance sheet. In many cases where one business sells to another they're buying the brand and reputation with customers. Trade marks are a key part of this.
Certainly if a company were considering franchising or licensing then a substantial aspect of the businesses value lies in the brand and its representation. So if this cannot be protected against imitators then franchisees and licensees would rightly question quite what the fees they pay are delivering in the way of business value.
12. Don’t forget to plan for the future.
Even if you are a small start-up, this does not mean that you shouldn’t plan for the future - and protecting your brand name and identity is crucial to this. Your brand needs to be not only consistent with your current strategy but supportive of future success.
13. How much does it cost and how long does it last?
A registered trade mark can cost as little as £470 and lasts for ten years before renewal fees are due. However, once it’s registered you cannot increase the scope - so if you currently only sell clothing but are harbouring a desire to expand to hair products, then it’s worth applying for that class, otherwise you will have to start and fund a second application from scratch.
Trade Mark Direct is a trade mark advice and registration company that specialises in helping small businesses.
Read more about branding and image on Enterprise Nation