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Brands represent the origin, quality and other distinguishing features of products and services and can have an extremely high commercial value. Brand names are important for all businesses, whatever their size or sector, and should be properly protected. The best way for a business to safeguard its identity and reputation is to register its brand as a trade mark. Registering a trade mark can enhance business identification and performance and help protect goodwill.
A trade mark is a sign which can be represented graphically and which is capable of distinguishing the goods and services of one business from those of another. Trade marks are commonly business names, product names, logos, slogans and domain names.
There are however certain exceptions to registration. It is not possible to register a trade mark which is contrary to public policy or the principles of morality and registration will be refused where an application has been made in bad faith. In addition, it is not generally possible to register a trade mark which describes the characteristics of the goods or services, has become customary in the applicant's line of trade or is not distinctive.
Trade marks are registered in classes which relate to different goods and services. There are currently 45 classes. Classes 1 to 34 relate to goods and classes 35 to 45 relate to services.
A registered trade mark gives its owner a statutory right to exclusively use the trade mark in connection with the goods and services for which it is registered. Generally speaking, a trade mark owner has the right to take action against any person who uses an identical or similar mark in relation to identical or similar goods or services without permission, where such use is likely to cause confusion.
An application to register a trade mark may be submitted online or sent by post to the UK Intellectual Property Office. The official application fee for paper filing is £200 for the first class and £50 for each additional class thereafter. Once an application has been submitted, a filing receipt and application number will be issued.
The application will then be assessed for compliance with the applicable criteria. An examination report is normally issued within one month of receipt of the application and will state that the application is accepted or will list objections which must be replied to within the stated time period. If objections cannot be overcome, the application can be withdrawn or it will be refused. In addition, the examination report will highlight any confusingly similar earlier marks. There is a period of two months to discuss any earlier marks with the examiner. If the applicant decides to proceed with the application notwithstanding the earlier marks, the owners of the earlier marks will be notified of the application.
The next step is publication of the trade mark in the Trade Marks Journal. Once published, the trade mark will be advertised for a period of two months during which time the owners of the earlier notified marks or any other party can oppose the application. Successful oppositions could result in the trade mark not being registered and costs being awarded against the applicant. If the mark is not opposed or oppositions are overcome, the trade mark will be registered following the advertisement period and a registration certificate will be issued.
A straightforward application (where no objections or oppositions are received) should take about six months to proceed to registration. Once registered, a trade mark can be licensed or sold to another party. Registration lasts for ten years but can be renewed indefinitely.
We have substantial experience in dealing with trade mark matters and can help at every step of the way in protecting and safeguarding your brand. If you are in the process of adopting a new brand, have not yet protected your existing brands or have concerns that another party may be infringing your brand, please get in touch with us to find out more about our trade mark services.