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Registered Trademarks - should you have one?

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If you are trading and you have a brand either for you or for a particular type of good or service that you supply you should consider getting it registered as a trademark. The fact that it is your company name is NOT sufficient to prevent others using it or a similar mark as a trading name or a brand.

This applies whether you sell to consumers or to businesses.

If you don’t have a registered trademark you can only prevent others using the same or a similar mark if you can show that those who buy such goods or services are confused by that usage into thinking that the goods or services are something to do with you—almost impossible if you don’t have a substantial market presence and much more difficult than showing trademark “infringement”.

Trademark infringement occurs when someone else uses:

  • A mark identical to yours for the same or similar goods/services
  • A mark similar to yours for the same or similar goods/services
  • A mark identical or similar to yours, but for different goods/services, in circumstances that it “damages” your mark—yours needs to be pretty famous for that to happen.

It is not necessary to show confusion actually having occurred.

Registration and its protection is specific to the country or territory in which it is obtained. You could for example register a mark for the UK, for the US, for France or for the whole of Europe.

Although ultimately you need to use the mark in the relevant territory for the registration to help you, it is useful to obtain registration in territories in which you intend to operate to prevent others getting there first. So if you are currently only operating in the UK but intend to start exporting to France in the next few years it would be sensible to go for registration in the UK and France or for the whole of Europe.

This may be the best possible reason for registering your brand—to give you freedom to use it and prevent other people getting the right to stop you using it.

To register a mark (a word or a logo) for the UK will cost you about £1,000. To register a mark for the whole of Europe will cost about £1,700.  For the US it is about £3,000 (in one class).  To get worldwide coverage is probably too expensive for anyone other than the largest companies.

Once registered a trademark lasts ten years (in most territories) and can, for a fee, be renewed indefinitely.

This is of course a huge simplification—the law on the subject is complex.  We do not recommend clients making their own trademark applications.  We can advise on the procedures and on choosing a mark to register.  We refer the application process out to local trademark agents with whom we work closely.

To discuss trademark applications and the procedures involved, contact Geoffrey Sturgess on 02380 717717 or email geoffreysturgess@warnergoodman.co.uk.

ENDS

This is for information purposes only and is no substitute for, and should not be interpreted as, legal advice.  All content was correct at the time of publishing and we cannot be held responsible for any changes that may invalidate this article.