Trademarks -Why It’s Good To Have One
What is a Trademark?
Obtaining a Trademark is one way of making sure that you register exclusive rights to use your logo or ‘mark’ and enables you to use the ® symbol. It is your unique identification of your services and/or products. Without registration you can only use the initials TM and have more limited choices to tackle copiers of your logo or mark.
Trademarks are based on the Intellectual Property Office’s classification of your goods/ and or services and in the UK there are currently 34 classes of goods (classes 1 to 34) and 11 classes of services (classes 35 to 45) available to choose from.
What can you Trademark?
A Trademark is a form of intellectual property (IP) and generally covers a word, phrase, name, symbol, logo, images and pictures, or design or a combination of them. It also covers non-traditional/non-conventional Trademarks such as colours, smells, sounds, 3D forms or a combination of any of them. Provided it can be graphically registered and can be used as a distinguishing mark, then it can probably be trademarked.
Examples of Trademarks include the turquoise shade used on Heinz beans which can only be used on those beans, the NatWest logo, and the Chanel No 5 bottle shape.
You can register Trademarks in UK, EU, USA and in individual countries.
What is the value of registering a Trademark?
Having a registered mark gives you an exclusive right to use your mark and serves as an indicator to others that they can not use your unique mark. Registering your Trademark means there is no doubt as to ownership, age/date of registration etc.
Without registration you do have a common law right to protect your mark but this is limited. For example, you may only be able to take action where your mark is used and confuses a buyer that they are buying your goods and/or services. However, you will need evidence to prove ownership, age/date of registration. This is so much easier to prove with a registered mark and so many businesses consider it an investment against future hassle and theft.
Part of the Trademark process involves a search to ensure the Trademark you wish to register is not already in use, and this in itself is a valuable method of checking you are not actually infringing another Trademark.
Trademarks will also assist in counterfeiting which is particularly relevant if your branding grows as infringing trademarks by counterfeiting is also a criminal offence.
Is there any benefit to incurring the cost of registering a Trademark?
Provided that the Trademark is not unused for a continuous period of 5 years, registration lasts indefinitely but must be renewed every 10 years. Once you have incurred the cost, there is a renewal fee to pay. Compared with the cost of litigation over unregistered IP it is a small price to pay.
There are distinct costs benefits to registration not only from the search process and protection detailed above but since a Trademark IP has value, it will normally have an element of goodwill and so can be sold. It’s an asset like others in your business.
Geographical types of Trademarks
Trademarks can be registered
- a UK Trademark which solely covers the UK
- a Community Trademark (CTM) covers all member states of the EU
- an International Trademark – a procedure allows you to register a Trademark with the World Intellectual Property Organisation (WIPO). There are currently 66 countries (please see the table for included countries) which have signed the Madrid protocol and if you have a Trademark registered with one (or more) of those countries you can extend your protection to cover other WIPO countries more easily than doing it on a country by country basis.
- If you want to cover other countries not within the WIPO, then this can be done on a country by country basis.
Before proceeding with an International Trademark you need to at least have a Trademark pending in UK and/or EU.
Find out the cost of getting a trademark