Trademark registration and advice

Trademark registration and advice

Registering a trademark can be one of the best ways to protect the intellectual property of your company brand and it means that once registered, you can take legal action against anyone who uses your brand without your permission in your particular industry. Equally, if your brand ends up being particularly valuable, you can licence its use by others and generate royalties.

Can I trademark anything?

Before a trademark can be applied for, the name and any visual representation of it, including logos, must meet certain guidelines.

In terms of the name itself, it mustn’t be offensive or too obviously descriptive of the goods or services it will relate to. “Accounts and Legal”, was actually quite difficult to trademark because it is descriptive of the services we provide. It also mustn’t be misleading or too general. And it can’t contain a common surname like “Smith” or geographical place like “Manchester”.

And critically, it can’t be easily confused with any previously registered trademark.

Where will my trademark offer protection?

Once you’ve picked your name, the first thing to do is search the register for any similar trademarks at the UK Intellectual Property Office.

When you do this, you’ll see that you need to that you need to specify the class – there are 45 trademark classes to choose from. You can select as many as you like as long as there aren’t any similar marks in the classes you are considering – and – you need to have a real intention to use the mark in all of the areas that you select. In practice, it is likely to be hard to convince the UK Intellectual Property Office that you will realistically use more than a handful of classes, and a further risk is that if the mark is not used for 5 years in all of the classes specified, then the registration can become invalidated and removed from the register.

If you intend to trade abroad you may need to consider registration in each county you will be active in, or via the EU Trade Mark system which covers the 27 European Union countries.

Should I do it myself?

The cost of registration at the IPO isn’t generally prohibitively expensive. But it is well worth getting expert help when drafting your application, searching for similar registrations and selecting your classes, so that your trademark application has the best chance of success. We have dedicated solicitors who specialise in intellectual property and trademark applications. Equally, if you need help defending a claim for passing off or infringing someone else's trademark, please don't hesistate to drop us a line.