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The following is a list of the most common questions we’re asked about trademark and design registration. If you have any questions that aren’t covered here, or would like to know more, please call us on 01223 208 600.

 

What is a trademark?

It is a sign that distinguishes the goods and services of one trader from another and is often your most valuable asset. A sign is anything that can be graphically represented.

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Why should I register my trademark?

From a commercial perspective, you need to protect your assets so that you have the security of knowing it is safer for you to use the trademark and that you can prevent someone from damaging your business by using a similar mark. If you don’t register your trademark, someone else can register a mark that is the same or similar, which could impede your use of your mark and limit the scope of developing it in your business. Once a trademark has been registered, you will find it easier to enforce against other people who have acquired a conflicting interest. If you are hoping to develop your business, or attract investment, or even sell it, registering your trademarks is also very important and forms part of essential due diligence.

Trademarks are property rights that can be bought, sold and licenced for profit, and you can prevent registration of a conflicting trademark or sue another party for trademark infringement if they use your trademark – even if you have not used it yet. You have the right to sue a third party acquiring a conflicting interest for trademark infringement, for an account of turnover or profit.

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How do I register a trademark in the UK?

An application has to be filed at the relevant Registry, which shows the mark exactly as it is to be registered, provides details of the goods and services to be protected, the name and address of the applicant, and the statutory fees have to be paid. The application is then examined to ensure that it is a trademark within the scope of the Trade Marks Act, and a search will be undertaken to identify earlier similar trademarks. A report is issued by the Registrar identifying any deficiencies in the application and allowing one attempt to overcome earlier marks. The application will be advertised for opposition by third parties for two months. The Examiner will notify the owners of earlier UK and (some) Community rights that have been maintained as objections against the application of the advertisement. If there aren’t any objections after the application is advertised, it will be registered for 10 years from the date it was filed.

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I’ve registered a company or domain name. Why should I register my trademark?

In order to secure your rights in your brand, you should register it as a trademark.

A trademark grants you a legal monopoly in your mark whereas a company or domain name does not. The Companies House and Domain Name Registrars do not check for trademark rights during their registration processes and it is often the case that conflicting trademark rights exist.

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Do I have to register my trademark?

No, it isn’t compulsory but it is advisable. You will have a legal monopoly in the trademark when you apply it to your goods and services. Enforcing rights in a registered trademark is often easier than relying on an unregistered trademark, which can be more costly and the outcome less certain. It is difficult and costly to take action against a third party who uses your trademark without your permission when you have not registered it. You would need to have an exclusive reputation in your trademark, acquired over a substantial period of time. You would also need to show that the third party use was likely to deceive or confuse the relevant public and that this was likely to damage your business.

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Can all trademarks be registered?

No. A trademark has to be distinctive and non-descriptive and words that are commonly used in the trade may not be registerable. There is often a misconception that ordinary words cannot be registered as trademarks. This is often only true where the words have a meaning in the specific industry sector. For example, the word ‘bananas’ would not be registerable for fruits, but would pass the distinctive and non-descriptive test for website design services.

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Once I’ve registered my trademark, what rights will I have?

You will have a statutory monopoly in the trademark, which should allow you to prevent exploitation of it by third parties.

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How long will it take for my trademark to become registered?

The time it takes to register varies depending upon whether objections are raised. A straightforward application takes approximately six to nine months in the UK to register. It is possible to fast-track UK applications, which means that a straightforward application can register in four months. An uncomplicated Community Trademark application takes between nine and 18 months.

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How long is a trademark registered for?

A trademark remains registered for a period of 10 years from the date it was filed. It is then due for renewal in 10 yearly periods.

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I’m already using my trademark. What effect will this have?

If you have established a reputation in your trademark, this may assist in the registration process if there are conflicting trademarks on the Register. You will have unregistered trademark rights in your mark that may allow you to register it alongside conflicting rights that already exist on the register. Whilst you have common-law rights, it is difficult and costly to take action against a third party who uses your trademark without your permission when you have not registered it. You would need to have an exclusive reputation in your trademark, acquired over a substantial period of time. You would also need to show that the third party use was likely to deceive or confuse the relevant public and that this was likely to damage your business. Common-law actions are often more costly than relying upon a registered right.

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I plan to use my trademark abroad – what do I need to do?

Trademark registrations are jurisdictional. You need to ensure when you use a trademark in any country that you do not infringe somebody else’s rights. You should conduct searches of the relevant Registers and where possible file an application to protect your trademark in order to protect yourself and to be able to prevent third parties from exploiting your rights. Not all countries recognise common-law rights and the first person to register a trademark owns it.

You need to be aware that making sales over the Internet into other jurisdictions constitutes use of a trademark and you need to be sure that you aren’t infringing someone else’s rights. Conversely you don’t want a third party acquiring rights in your trademark. Hence the importance of searching and filing applications in all the countries you trade in.

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I’ve registered my trademark – what should I do now?

There are several things that we recommend. You should subscribe to a name watching service so that you are aware of third parties acquiring a conflicting right. You should also regularly review your trademarks to ensure that they are protected in the form you use them for all of your goods and services. Check the style of mark you are using against the one that you registered. If they are different, take professional advice as you may need to register the new version as well. You also need to be aware of the goods and services that you registered your trademark for and, if you add goods and services, take advice as to whether they are covered by your registration.

 

Your trademarks should not be used in a manner that will damage them, for example by making them common words in your industry. You should acknowledge they are trademarks, using the letters TM until such times as they are registered, when you are entitled to use the ® symbol. In the body of text you should use a different font when you refer to your trademark so that it stands out.

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Someone’s using my trademark

You need to take professional advice as soon as possible in order to benefit from all the courses of action that you may be entitled to. Delay can affect your case and be damaging to it. Contact us on 01223 208 600.

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Someone is objecting to my trademark

You need to take professional advice without delay. If you receive a letter from a solicitor there is likely to be a legally enforceable deadline which you should not ignore. If your trademark application has been opposed, its registration has been interrupted. The opposition process is complex and you should take professional advice, bearing in mind the strict deadlines that will be set by the Registry. Contact us on 01223 208 600.

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Why is my trademark advertised by the UK Registry?

This is a statutory requirement allowing interested third parties to object to registration of your trademark.

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How long will my trademark be advertised for?

Your trademark application will be advertised for two months although a third party can apply to extend the period to three months.

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Why would someone oppose my trademark application?

If they have a similar registered or unregistered trademark or other right, then they may wish to object to your application.

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What happens if my trademark is opposed?

It is important to consider the grounds for opposing your trademark with a trademark professional because sometimes there is room for similar trademarks on the Register. You will have the opportunity to defend the application and you may have a variety of options open to you. For example it may be possible to come to a negotiated amicable settlement, or the grounds for the opposition may not stand up. We recommend that you seek professional advice without delay. For free preliminary advice, please contact us on 01223 208 600.

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Does it mean I can’t use my trademark?

Trademark oppositions are conducted in the Trade Marks Registry. The outcome does not affect actual use of a trademark. However, one would expect the decision to mirror a High Court decision. In order to prevent use of a trademark, one would have to take action through the courts and not the Trade Marks Registry.

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What is the trademark opposition procedure?

It is the process where an interested third party can object to an advertised trademark with a view to preventing its registration. Oppositions are often filed in order to come to an amicable agreement between the parties regarding trade boundaries.

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How long is the opposition process?

This varies. There are legal deadlines set by the Registry. However, the parties are encouraged to try and settle the dispute between themselves and professional advice is essential. Where an opposition is not settled and proceeds to the Registrar making a decision, the process can take up to two years.

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What costs are involved?

If you are filing an opposition, you will have to pay the statutory fees as well as those of your professional advisor. If you need to file evidence in the opposition, this will increase your costs.

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Can costs be awarded in my favour in the opposition?

Yes. The Registrar can make an award of costs although these will not normally reflect your actual costs. The costs are awarded according to a scale and will depend upon the stage of the opposition.

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Can costs be awarded against me in an opposition?

Yes. The losing party can have an award of costs made against them. These are awarded according to a scale and will depend upon the stage of the opposition.

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What does it mean if the Registrar issues a preliminary decision against my trademark?

A senior officer in the Registry will consider the case after a counterstatement has been submitted. Their decision is not binding, but is meant to provide the Registrar’s opinion based upon the preliminary facts before them. The party against whom the decision is made has to decide whether to continue with their application or opposition and formally request that the proceedings continue. It is important to note that the Registrar is often making a decision from the most basic of information and it is important to consider your position with a professional trademark advisor before deciding how to proceed. Abandoning your application or opposition might not be necessary.

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Someone has applied for a similar trademark to mine – how do I prevent it being registered?

By filing an opposition. However, you should take professional advice as to the similarity of the trademarks.

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How do I know if an opposition succeeds?

There are various measures of success:

  • The application may be withdrawn by the applicant.
  • An amicable agreement may be reached between the parties, which may define how and where the trademark is used.
  • A mutually beneficial commercial agreement may be reached.
  • The Registrar makes a decision in favour of one party resulting in the trademark not being entered on the Register, or its specification being restricted.
  • In some instances special conditions may be placed on the trademark by the Registrar, for example limiting its rights to a geographical area.

Remember, however, that the Registrar’s decision does not prevent the losing party from using the trademark – action through the courts would be needed to enforce this.

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My opposition was successful – can the other party still use their trademark?

Yes. It would be necessary to take separate action through the courts in order to prevent a party from actually using a trademark.

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What is a domain name?

It is a sequence of letters and numerals used to identify organisations, computers or addresses on the Internet.

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How are domain names protected?

By registering your domain name you prevent anyone else registering the identical domain. However, there are many variations that are similar and domain names often contain trademarks. In fact, use of a domain name can be trademark use, which can amount to trademark infringement if someone else owns the mark. Owners of trademarks have some protection against cybersquatters and are entitled to use a domain dispute resolution process to prevent use of a conflicting domain name. ICANN administers top level domains, for example those that have the suffix ‘.com’. Nominet UK deals with domains that have the ‘.co.uk’ suffix.

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How can I protect my domain name?

There are numerous Internet sites that will register domain names for you. Anyone can apply and obtain registration of a domain name that has not been registered, or whose registration has expired.

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What should I do before I use the domain name?

We strongly recommend that you conduct trademark searches in the countries where you will be trading with your domain name. If you are including your trademark as part of your domain then you should apply to register it as a trademark. You should also undertake Internet research to see who else is using a similar domain name and what they are using it for.

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