According to the World Intellectual Property Organization (WIPO), “A trade mark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises.” It is designed to protect origin, so customers can identify ‘the real thing’ - itself a protected trade mark for Coca-Cola.

Although most trade marks are company, product and service names, logos or images, you may also be able to use a trade mark to protect:

• Sounds
• Colours
• Three-dimensional shapes
• Smells
• Gestures
• Or a combination of any of the above

A registered trade mark gives you important legal rights – for example, you can take anyone using your mark to court; you can ask Customs & Excise to seize infringing goods; you can send a ‘cease and desist’ letter demanding infringement stops; and you may be able to claim damages.

These can be very powerful deterrents for anyone thinking of trying to trade using your reputation.

You can also use the ® symbol next to your trade mark in the territories where it is registered. Note, though, that it’s illegal to use this symbol if your trade mark is not registered.

You can potentially:

• generate extra income through licensing
• sell the trade mark
• use it in discussions with investors, lenders or grant bodies, or as collateral for borrowing

Assuming you pay the renewal fees every 10 years and that you continue to use it for the goods and services it has been registered against, a trade mark can potentially last forever.

Compare this with patent protection, which usually lasts a maximum of 20 years.

Registered trade marks are recorded against specified goods and services, as set out in an internationally agreed list of Classes. There are 34 Classes for goods and 11 for services, and a set of recognised descriptions for each one.

It’s a good idea to enlist the help of a qualified trade mark attorney. They can also help with searches (to establish if someone else is already using the same or a similar mark) and with managing the whole application process, including defining the Classes and specific lists of goods and services.

In general, it can help broaden the scope of your trade mark if it can cover multiple relevant classes and possible sub-categories of goods and services you may use it for, or plan to use it for in the near future. Try and anticipate any business areas you may expand into in the future, so this initial application will cover them.

But if after five years you have not used a trade mark for one of these registered goods and services, then you may lose the registration for the unused purposes.

The process of registering a trade mark is relatively quick and straightforward, as long as there are no absolute or relative grounds (to use the technical terms) for refusing it.

Absolute grounds will differ from country to country, but in the UK they would include:

• The use of purely descriptive terms, common and non-distinctive words, or generic images and shapes associated with what your company does – unless you can show these have been associated with your company through consistent use over time
• Misleading words/images – for example, you can’t use the word ‘organic’, if what you sell isn’t actually certified as organic
• National flags and official emblems or hallmarks, such as coats of arms, without permission; or certain internationally recognised terms and images which have special protection, such as the Olympic rings and the Red Cross/Red Crescent symbols
• Offensive words or images

Relative grounds concern how prior rights relate to a mark you are trying to register. If there is a chance of confusion between your proposed mark and an existing one, then the likelihood is yours will be refused. You may, however, be able to negotiate with existing rights owners to narrow the scope of your trade mark and remove the possibility of confusion.

Trade marks are country or region-specific, and the fees can add up; so start by creating a strategy for your trade mark registrations. Prioritise and budget:

• Where must you register now (because you are already operating there, plan to launch there imminently, or think you could license the trade mark to a distributor or agent there)?
• Where is the next priority country/region?

Don’t forget that a word or symbol may have quite different meanings or associations in different countries.

In the UK, the official filing fees are £170 to file online or £200 for a paper application; this is for one trade mark in one Class. Each additional Class costs an extra £50.

Finally, you may have seen companies using ™ after a trade mark instead of ®. The ™ symbol can be used to indicate an unregistered trade mark.

A company which uses a trade mark, brand, product name, or logo over time may be able to claim common law rights to that mark because of use and reputation without registering it, and using TM may indicate to anyone seeing it that you regard it as a trade mark; this in itself can help acquire distinctiveness.

However, registering a trade mark gives you much stronger protection. With a registered mark, a rival has to prove they are not infringing your rights.

With an unregistered mark, the mark owner must prove in court, under the laws covering ‘passing off’, that they have suffered financial loss and/or other damage through someone else’s use of a similar mark. This is not straightforward - it often involves extensive market research to prove confusion amongst customers, and detailed analysis to evidence resulting damage.

For more on this topic visit Inngot - Adding value to your intellectual property.

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