Trade marks are crucial assets that can make or break your brand. Obtaining trade mark protection for your key brand elements is essential in building brand identity, recognition and customer loyalty, as well as ultimately ensuring the longevity of the brand. They can also help add significant value to your intellectual property portfolio and by extension to your business. Here are seven key trade mark principles every founder should know.

Is Trade Mark Registration Worth it?

This is one of the questions we are most frequently asked by clients and it is always an easy yes. Not only do they add huge value to a business and will be something any investors, franchisees and purchasers expect to see as part of their due diligence, they are also critical to prevent brand dilution and confusion with rival businesses. Although it can be possible to build up unregistered rights in signs used in trade, unregistered rights do not offer nearly the same level of protection as registered trade marks and infringement is much easier to prove where a mark is registered. Trade mark registration is also a key basis for obtaining relief against domain name squatters.

Does My Registered Company Name Give Some Protection?

Registering a company name is not the same thing as registering a trade mark. Establishing a business under a particular name does not necessarily mean that the chosen business name is free to use as a brand or trading name. That is a separate consideration which is not achieved by incorporating a company at Companies House or registering a domain name. Only by registering a trade mark will you have the legal right to exclusively use that name in that territory for the goods and services you choose to protect.

What Can be Protected as a Trade Mark?

Whilst most startups will register a simple word and/or logo as their trademark(s) to start with, the reach of trade mark protection is far broader than simply words and logos. Less conventional signs such as colours, shapes, sounds, smells and even motion, hologram and multimedia sequence marks may be registered too. The fairly recent removal of the graphical representation criteria for trade marks has further lowered the hurdle for protecting less tangible marks such as sound, smell and multimedia marks. Famous examples include the sound of MGM lion’s roar, the smell of Hasbro’s Play-Doh, and the sound of Zippo’s signature click sound. Although these less conventional marks may in theory be protectable, they will still need to be sufficiently distinctive in order to be associated with the owner and therefore fulfil the function of a trade mark as an indication of commercial origin.

Certain marks are inherently unregistrable. These include marks which are devoid of any distinctive character, which are simply descriptive of any characteristic of the goods or services (e.g. their kind, quality, quantity, intended purpose, value or geographical origin), which are contrary to public policy or to accepted principles of morality, along with a few other fairly niche categories.

One of the most significant barriers to registration is the existence of a mark in which another party already has rights (usually a registered trade mark) in the same or a similar field. This is quite a nuanced test. It is ultimately assessed on a global basis, taking account of the aural, visual and conceptual similarity between the marks, judged from the point of view of the average consumer who is deemed to be reasonably well-informed, observant and circumspect. Trade mark practitioners can give an informed view on the likelihood of any risk posed by potentially confusingly similar marks and often suggest workarounds to mitigate any perceived risk.

When is the Best Time to Seek Trade Mark Protection?

Trade marks generally work on a first-come-first-served basis - at least in the UK and many other countries - so seeking trade mark advice as early as possible in your journey is vital. This not only helps to ensure that you understand which of your brand elements are registrable, but also whether your marks are already taken, and that you are registering them in the right way and in the appropriate territories.

Since trade marks may be opposed by earlier rightsholders, the clearance search (which involves carrying out thorough searches of the trade mark database to check the sign is free to use) helps to flush out problems with pre-existing marks. Acting early therefore helps to avoid accidental adoption of someone else’s mark and the potential legal conflict and costly rebranding exercise that would likely ensue if that happened. You can do an initial search for existing UK trademarks on the UK Intellectual Property Office (IPO) website.

Where Should I Seek Trade Mark Protection?

Trade marks are territorial (and there is no such thing as a ‘worldwide trade mark’) so you need to consider where you intend to market and exploit the goods/services protected by your mark. If the bulk of your customers are UK-based then a UK registration makes sense. If your business is active in other territories, then you may look to protect the mark in those jurisdictions as well or instead. It is possible to apply for EU-wide trade mark applications at the EU Intellectual Property Office, as well as to expand trade mark applications to international jurisdictions via WIPO’s Madrid Protocol system. These options can be an administratively effective tool in avoiding having to manage numerous trade mark registrations in numerous territories over the course of their lifetime.

Process, Timeline and Costs for Securing a Trade Mark Registration

Before filing a trade mark, a trade mark specialist will start by working with you to understand your business model, draft the list of goods/services in relation to which the mark will be used (known as the ‘specification’), and carry out a clearance search. Timelines are territory-dependent but you can expect UK and EU marks typically to take around 4 - 6 months respectively from application to completion of registration where you own the trademark (provided there are no oppositions during the process). Costs vary widely depending on which and how many territories you are seeking protection in. Multiple trade mark applications in multiple territories can get extremely expensive, so it’s not uncommon for startups to begin with UK protection and see how things go.

Key Brand Management Steps Following Trade Mark Registration

Proactive policing of any unauthorised use of your trade mark by others is an important part of any brand management strategy. If you notice someone using your mark (or something confusingly similar to it), a sensible first step is to send them what is known as a ‘cease & desist letter’. This puts them on notice of your trade mark rights, requests them to stop use of the identical/similar mark and usually seeks further details about the infringement and often financial compensation too. There may even be an opportunity to negotiate and come to a friendly settlement, such as a licence or ‘co-existence agreement’.

However, accusing someone of trade mark infringement can result in a counterclaim if there are potential grounds on which your mark could be cancelled or revoked. For example, if it is too descriptive or misleading, hasn’t been continuously used in the last five years, or if they can show that they had rights in that mark before you applied for yours. So it is advisable for brands to tread carefully and take advice from an IP specialist as to their strength of their case before embarking on a course of opposition that risks backfiring.

Considering the monopoly nature of the protection they confer - 10 years (with the potential for indefinite renewal) – trade marks are an extremely valuable asset. Protecting one or two of your main branding elements (e.g. name/logo) as trade marks can be accomplished relatively quickly and inexpensively. Have you thought about exploiting these opportunities?

Feel free to reach out to us for an introductory call to discuss how you may able to protect your own distinctive brand features and how we can assist you throughout the process.

Accelerate Law provides strategic and legal advice to startups and scale-ups throughout their lifecycles, including supporting with trademark registrations. Contact us here to find out more and speak to one of our team and join our client group of high-growth startups and scaleups achieving their objectives quickly and securely with Accelerate Law.