FAQs: trade mark

Our trade mark FAQs are answers to common questions from a broad range of our clients: some want a grounding in the basics, and other clients are already working with trade marks. Whether you’re just getting started or you already have trade marks that need managing and protecting, our expert team of trade mark solicitors are here to help.

General Trade Marks FAQs

What’s the definition or meaning of a trade mark in the UK?

In the UK, a trade mark is ‘any sign capable of being represented graphically, which distinguishes goods or services of one undertaking from those of others’. Trade marks include any design, word(s), letter(s), number(s), or shape(s) which have an association with a product or business.

Why would you need to use a trade mark?

Trade marks are a good way of distinguishing your business from other businesses. By allowing you to grow your brand, trade marks allow you to create an identity which can help you with advertising and marketing.

What can happen if you don’t register a trade mark?

If you don’t register a trade mark, anyone can use your name for a product/brand and copy your design, logo, colour, letters, and numbers. As a result, the particular characteristic of your product or brand which forges a connection with your business is no longer unique to you.

A failure to trade mark would also deprive you of the benefit of relying on that distinctive characteristic to build a reputation and market your business. The lack of exclusivity may cause confusion for the public as they might buy a product from a different business using the same brand name as yours, only to find inconsistency in quality of products from the two businesses. This could lead to a bad reputation being acquired by the brand you use, which would affect your business’ profitability.

What can you trade mark?

You can trademark a variety of things, including product names, business name, brand name, logos, and jingles.

Examples of existing trade marks include ‘Starbucks’ and Nike’s tick logo. The important thing about trade marks is that the mark must have a distinctive character. Taking the example of Nike’s tick, whilst the image is generic, the association between the tick and Nike has grown so prominent that consumers immediately make a connection between the company and the image. This adds the distinctive character required to trade mark a mark.

It is possible to also trade mark slogans. Unlike images, it takes longer to build an association with a slogan, and can be hard to prove. However, many slogans have been trade marked. For example, McDonald’s 'I’m lovin’ it', and Tesco’s 'Every little helps' are both registered trade marks. These slogans have built up a strong association with their respective companies, meaning they have the requisite distinctive character to be trade marked.

Is there anything you can’t use or register in a trade mark name?

The Trade Marks Act 1994 prohibits the registration of trade marks which:

• Are devoid of distinctive character, because the mark must be recognisable as a trade mark in the sense that the public can make the connection between the trade mark and owner.
• Consist exclusively of signs or indications which may result in association with the identity of a different undertaking/business.
• Consist exclusively of signs or indications which are customary in current language, or in the bona fide and established practices of the trade. This means generic terms used by anyone in the same trade, for example ‘smartphone app’ or ‘software service’.

What can’t be trade marked?

You cannot trade mark anything which is:

• Offensive. For example, your mark can’t have swear words, offensive language, or pornographic images.
• Descriptive of the goods or service it relates to.This means you can’t trade mark the product name ‘chocolate’ for chocolates sold by your business.
• Misleading. For example, you can’t trade mark using the word ‘organic’ if the goods aren’t organic.
• Too common and non-distinctive.
• Too similar to state symbols like flags or hallmarks.

Can a moving image be trade marked?

The IPO is planning consultation on planning amendments to the Trade Marks Act. This would involve implementing the EU’s most recent Trade Mark Directive which would enable UK business to register moving images as a trade mark.

In the UK, the Intellectual Property Office (IPO) requires applications to be made in a paper-based, 2D format. This means to allow for registration of  a moving image, you would need to submit a huge number of still images to obtain a trade mark for the moving image. This could be difficult and costly.

BT successfully obtained a trade mark for its revolving logo, and Microsoft obtained a trade mark for its pulsating Windows logo.

Can a sound be trade marked?

Yes, it’s possible to register a sound as a trade mark. To register a sound or jingle, you’ll need to send the IPO a conventional musical notation.

You’ll face more difficulty if you want to trade mark a sound which imitates things like wind or rain - because these sounds can’t be represented by conventional musical notations. If you do have such a sound or jingle, you could still apply to register if you can represent the sound through images of spectrograms and sound wave characteristics.

An example of trade marked music includes the ‘I’m lovin’ it’ jingle by McDonald’s.

Can slogans or phrases be trade marked?

Yes, slogans and phrases can be trade marked. As these are capable of being expressed visually on paper and accurately described, it’s possible to apply for a trade mark.

However, the slogan or phrase must be distinctive. It can take time for the association between your slogan/phrase and business to develop. Applying prematurely, before you can demonstrate this association from the view of the public, is likely to reduce the chances of a successful application. It’s therefore important you wait until you are sure that your application will be successful.

Examples of well-known trade marked slogans include Amazon’s slogan 'No Lines. No Checkout. (No, Seriously.)' and Maybelline’s 'Maybe she’s born with it. Maybe it’s Maybelline.'

Can shapes be trademarked?

Yes, shapes can be trade marked. To trade mark a shape, you need to send a set of drawings which show the shape from different angles. If you are trade marking a shape, it’s helpful to include details on dimensions and proportions.

One example of a trade marked shape is the double oval shape used in Specsavers’ logo. Again, there must be a distinct character in the shape. Tesco lost its battle to trade mark the blue dash under its name. The IPO stated the dashes were ‘too simple and devoid of character’. If you’re unsure whether the shape you want to register is distinct, you should get advice from a trade mark solicitor.

If you’ve registered your company name at Companies House, can you also trade mark it?

Yes, you can trade mark your company name if you’ve registered your company name.

In fact, it’s highly recommended that you trade mark your company name because registering at Companies House won’t stop other businesses like sole traders and partnerships from trading under your company name. This is because registering with Companies House only means that no other incorporated company can register with that name.

So to ensure you have sole rights to use your company name for trade, you should definitely trade mark the company name.

Applying for and registering a trade mark

What’s the process of trade marking?

When you apply to register your mark as a trade mark, you may decide to use a trademark solicitor to help with the process. However, it is possible to register a trade mark without professional advice. Here’s a step-by-step outline of the process of applying to the IPO to register your trade mark:

• Step one – search for similar marks in your sector
  
  To trade mark a mark, you first need to ensure the mark qualifies as a trade mark.
  
  You also can’t register your mark if it’s similar or identical to a trade mark already registered in relation to the same or similar goods/services. To check this, you need to search the trademarks database.
  
  If someone has already registered a trade mark that is the same as yours or similar, you can ask the holder of the trade mark to give you permission to register yours. This permission will be given in a letter of consent, which must be sent to the IPO with your application.

• Step two – apply to the IPO
  
  Once you’ve checked your trade mark is eligible, you can apply to the IPO to register your mark either online or by post. This will require you to provide details of what you are registering, the trade mark class in which you want to register your trade mark, and a fee.

• Step three – examination report
  
  Once you’ve applied, you’ll receive an examination report within 20 days. Any problems raised in the report must be resolved within two months.
  
  If the examiner has no objections to your application, the application will be published in the trademarks journal for two months.

• Step four – registration
  
  If no one objects to the registration, your trade mark will be registered, and you’ll be sent the registration certificate on the registration date (which is two weeks after the end of the two-month opposition period).

When is the best time to apply for a trade mark?

It’s recommended you apply to protect your trade mark as soon as possible. This reduces the chance of another person or business adopting and registering the mark as their own trade mark.

However, sometimes you can’t apply to register a trade mark immediately because your mark may not have had the time to acquire a distinctive character. You should therefore apply to register your mark as soon as it qualifies as a trade mark.

Again, if you’re unsure about this, get advice from a trade mark solicitor. Intellectual property (IP), including trade marks, can be the most valuable assets of some businesses. If you’re one of these businesses, managing your IP from the outset is key.

How is a trade mark registered and filed?

You can register a UK trade mark online at the IPO with a fee by filing a Form TM3 or by posting the form. You’ll need to specify which class of goods/service you want to register your trade mark within the application.

Can anyone register a trade mark?

Yes – as long as you have a mark which can be protected as a trade mark, you can register the mark. This means any company, LLP, partnership, or person can register a trade mark.

Where can you search for trade marks?

You can search for trade marks online.

To check for UK trademarks, you should check the IPO’s trade mark database here.

To check a database containing trade marks protected across the European Union, you can check eSearch plus.

To conduct a search for trade marks in a number of countries across the globe, the WIPO has database a which can tell you any trade mark applications which have been accepted and which are pending.

How long does it take to register a trade mark?

Registering a trade mark can be as quick as three to four months but can also take around a year.

Once you’ve done the preparation for your application and sent it to the IPO, it will take around three weeks to receive your examination report. In the report, the IPO may raise concerns or issues which you’ll need to address before your application is published in the Trade Marks Journal. The time it takes to address these issues will vary on a case-by-case basis.

What does it cost to register a trade mark?

The cost to register a trade mark depends on how many classes in which you register your trade mark. An online application has an original fee of £170 for registration in one class. However, for each additional class in which you register your trade mark, you’ll be charged £50.

For example, you may have a logo for food and drinks made and sold in your cafe. As the food and drink such as coffee and sandwiches are prepared for consumption, a class 30 registration is necessary.

If the cafe will also be selling food which has animal origins, such as meat and fish in soups and snacks, under the same product logo, then you may choose to register the trademark in class 29 too.

What trade mark documents will need filing with the Intellectual Property Office?

To register a trade mark, you need to file a Form TM3 with the IPO, by post or online. If you apply by post, it’ll cost £200. However, if you apply online, the initial fee is £170.

What is the Trade Marks Journal and why would you need to use it?

The Trade Mark Journal is a journal published every Friday, containing details about accepted UK trade marks and international trade marks that include the UK.

Once your trade mark is published in the journal, there is a two month period where anyone can oppose the registration of your trademark. If someone is still deciding whether to oppose a UK trade mark application, they can request the two month period to be extended to three months.

If no one opposes your trade mark application by the end of the two month period, your trade mark will be registered around two weeks after this date (on the ‘registration date’) and you’ll receive a registration certificate.

The Trade Marks Journal is also helpful for after your mark is registered, because it allows you to monitor which marks are being processed for registration. By checking all the marks published in the journal, you can immediately oppose registration of a mark similar to yours.

If you own a registered trade mark, does it entitle you to the internet domain name?

No – having a registered trade mark doesn’t automatically entitle you to the domain name. To be entitled to a domain name, you need to register the name with an accredited Registrar. The main UK registrar is Nominet.

The reason your trade mark doesn’t extend to trade names is because your trade mark may be used by different owners, in different services/goods. Those owners may therefore have protected the trade mark as a domain name by registering it with an accredited registrar before you.

What happens if the trade mark examiner opposes or has objections to your trade mark application?

If the trade mark examiner opposes or has objections to your trade mark application, this will be detailed in the examination report. You can therefore take these objections on board and address the matter.

The examiner will usually only have objections if its considered that your mark conflicts with a registered mark, or if your mark is not unique enough. As a result, the examiner may recommend restricting the goods/services for which your register your mark.

As you only have one opportunity to respond to the examiner (by way of written submission), you need to be careful with how you respond. Although bear in mind, you can call the examiner before making your written submission. They will be willing to consult with you over the phone as needed prior to submitting the written submission.

One response would be to explain to the examiner how your mark is distinguished from the conflicting trade marks and/or how your mark is distinctive.

However, as examiners are experienced, it’s likely their opinion in the report is an accurate representation of your application. You should therefore consider whether you wish to approach the owners of earlier conflicting trade marks, to seek their consent to the registration of your mark. Consent can be given under conditions that you cover the costs of the owner granting your permission.

Another response would be to withdraw your application and choose a different trade mark.

You can’t appeal the decision of the examiner, so working with the examiner to explain your application is important.

It’s also important to remember that if you proceed with your application and someone opposes your application when it’s published in the Trade Marks Journal, you’ll incur costs in defending your application in the opposition proceedings.

As general guidance on reasons for opposition, there are two types of grounds upon which your application may be opposed. They are absolute grounds and relative grounds.

Absolute grounds are that:

• The trade mark describes the goods or services for which it is registered for
• The trade mark is too generic for the goods or services
• The trade mark is non-distinctive therefore should be free for use by everyone in that trade

Relative grounds include:

• There’s an earlier trade mark or earlier right (which may be unregistered) that exists and would mean the opposed mark is conflicting (if registered).

What is a trade mark series application?

A trade mark series application is when you have a trade mark with multiple variations. In a trade mark series application, you can submit six marks which must look the same, sound the same, and have the same meaning. Any differences in the variation of the mark must be minor.

The benefit of making a trade mark series application is that one of your variations may meet the requirement, whereas a single trade mark you submit may not sufficiently different from earlier registered trade marks. Providing variations therefore increases the chances of your application being successful.

If you do make a trade mark series application and your application includes more than two variations, you’ll be charged £50 extra for each variation. It’s best to get advice from a trade mark solicitor on what kinds of variations will constitute a series in your individual case.

What is a collective mark and when does it apply?

A collective mark is a type of trade mark which indicates that the marked goods or services originate from members of a trade association and not just one trader. So for example, if you’re a member of a building organisation, you may be able to display the trade mark of that organisation and prove to the public that your business is a member.

The collective mark will be owned by the organisation that sought to register it. They will set criteria for use of the collective mark by any respective members of the organisation. To use the mark, you should apply to the trade association for membership. You’ll be granted a membership status with any trade association only if you meet the criteria of membership. Once your application is accepted and you’re granted membership, you can use the collective mark in the course of your business.

What is a certification mark and when does it apply?

A certification mark is a type of trade mark which is used by a trader to confirm or certify that the goods or services marked by the trade mark meet a defined standard or possess a particular characteristic. Essentially, they show that the goods or services comply with certain accepted standards.

Similar to a collective mark, you need to apply for the certificate with the relevant body or certification holder. If you meet the criteria, you can display the certification mark in the course of your business, as long as your products comply with the standards set in the certification.

When can you use the trade mark symbol?

The ® can be used if you have registered your trade mark. It’s not essential to display this symbol to benefit from your trade mark protection. The symbol simply serves to evidence that the mark is registered and it can’t be copied.

The ™ can be used if you have applied to register your mark and your application is pending. This symbol can also be used if you consider yourself as having a trade mark but haven’t registered the mark (or have been denied registration).

Where you have an unregistered trade mark, you can protect your mark by relying on the common law action of passing off. The classic form of passing off comprises a three part test. There must be:

• A goodwill or reputation attached to the goods or services.
• A misrepresentation by the defendant to the public (whether or not intentional) leading or likely to lead the public to believe that the goods or services offered by him are the goods or services of the claimant.
• Damage to the claimant, by reason of the erroneous belief engendered by the defendant's misrepresentation that the source of the defendant's goods or services is the same as the source of those offered by the claimant.

Trade marks internationally

Can something be trade marked worldwide? How?

You can trade mark a mark in around 116 countries across the world by making a single trade mark application through the WIPO under the Madrid System.

To use the Madrid System, if you’re based in the UK, you need to have a registered trade mark or you must have sent an application to register a trade mark with the IPO.

The first stage is to file an international application (basic application) with the IPO. The IPO will certify this application and forward it to the WIPO.

The WIPO will then conduct a formal examination of your international application. If your application is approved, it’ll be recorded in the International Register and will be published in the Gazette.

The WIPO will then issue certificate of international registration and will notify the IP offices in all the territories that you chose to have your mark protected.

The IP offices in the territories will comply with their national law to decide whether to register your mark in their registers. There is usually a time limit of 12 to 18 months to make a decision. Once a decision has been made, the WIPO will record the decision in its international register and notify you.

Getting the right advice

Do you need a solicitor to trade mark something?

It isn’t compulsory to get help from a solicitor, but it is recommended. Since your application will need to specify which classification you want to register your mark in, a solicitor can help you choose the right classes, and also advise on the best overarching strategies to protect your intellectual property.

You may also find it beneficial to seek assistance from a solicitor when addressing the concerns or issues raised by the examiner in the examination report. As you’ll only have once chance to make a written submission in response to the report, it’s important you take care with your response.

A solicitor is highly recommended if you want to protect your trade mark in a foreign country, whether in the European Union or internationally. Similarly, if you make a trade mark series application, you may need help identifying which variations qualify as a series.

What information will you need to provide to a trade mark lawyer?

If you seek help from a trade mark lawyer, you’ll need to give details about the proposed mark you want to register, the purpose of the mark (in terms of what will be ‘marked’ by the mark), what services or goods you provide in the course of your business and whether you would use the mark to branch into these extended services (if this is different to the original class for which you want the mark for).

Why choose Harper James trade mark solicitors?

Harper James trade mark solicitors have a great deal of experience with advising on protecting, managing, and defending your intellectual property. Working alongside a variety of clients ranging from large PLCs, technology companies, innovative retail brands, start-up companies, investors, and research organisations, our team understands your commercial needs.

Our combined team has experience of advising clients in numerous countries and jurisdiction, including Europe, Russia, the USA, China, Australia and New Zealand, working with a range of companies. Our solicitors have assisted clients in registering words, logos, shapes, slogans and colours as trade marks, alongside collective and certification marks.

What are the legal costs and fees we would charge to help you with your trade mark application and registration?

If you would like help with your trade mark application, you can contact us on 0800 689 1700, or make an enquiry.

What laws govern trade marks in the UK?

Trade marks in the UK are governed by the Trade Marks Act 1994. This act is supplemented by numerous statutory instruments, as well as some aspects of common law such as the tort of passing off.

Is there anything you should avoid when seeking to apply for and register a trade mark?

There’s a few things you should avoid when applying to register a trade mark. Some main considerations would include:

• Don’t charge straight into applying to register without first checking if your mark is similar or identical to a trade mark being used already for similar goods/services.
• Don’t assume that registering your company at Companies House will give you protection to your business name (trading name).
• Don’t assume that once your trade mark is registered that your responsibility regarding the trade mark ceases. Once registered, you need to monitor trade marks used in your class of goods/services to stay aware of any similar applications.
• Don’t unduly delay your application. Apply to protect your mark before someone else protects it. And if you want to register the mark in foreign countries, apply as soon as possible.

Trade mark classes and classifications

What are the different classes of trade marks?

In the UK, there are 45 classes of trade marks. Class 1 to 34 concern goods, and classes 35 to 45 concern services. For guidance on how to classify your mark in preparation of your registration, you can check the Government guidance.

How do you know or choose the right classification for your trade mark?

You won’t know if you’ve chosen the right classification until the examiner provides you with the examination report. Seeking legal advice with your application will mean that you’re in a better position to choose the right classification because a professional will have more experience of filing applications for registration.

If you do choose to apply without professional guidance, you can take some measures to ensure you choose the most appropriate classification for your trade mark.

For example, when applying to register your trade mark, draft a specification of goods and/or services which the trade mark will be used for. Try to make this clear and precise: the specification should cover both the immediate interest and future interest of your goods or services. If you see your trade mark branching out to different categories in the future, specify this in your specification.

When you’re considering to which category your goods or services belongs, take into account the following:

• The function and purpose of the goods
• Whether the goods consist of any raw materials
• What activities are involved in the service
• The class to which the subject matter of the advice corresponds when information services are being considered

You will now be in a better position when choosing in which categories to register your mark. Remember that each category costs an extra £50, so take a balanced and realistic approach.

If the examiner responds to your application asking you to restrict the classes in which you’ve applied for registration (for example, because of conflicting marks registered already in that class), you won’t be refunded your additional £50. This is a non-refundable fee. So, to save wasted costs, take care when choosing which classification in which to register your trade mark.

What happens if you choose the wrong classification for your trade mark?

If you choose the wrong classification for your trade mark, you can’t change to a different classification. Instead you would need to start a new application to register. Considering a new (online) application would cost a further £170 and results in prolonging the process to register, you should ensure you choose the right class from the outset.

Managing trade marks

How can you exploit or market your trade mark?

The main way a trade mark is exploited is by using it in the course of business to build your brand and reputation. For example, one branch of your café business may involve manufacturing and selling a wide variety of vegan food. To build a reputation for this type of food, you may create and trade mark a unique logo for your vegan food variety which is also closely associated with your business. If successful, you can branch out with your products and logo to sell your trade marked brand of vegan food through bigger retailers. This will allow you to expand your customer base and grow within the market, whilst simultaneously increasing your brand reputation.

An alternative way to exploit your mark is to sell the mark. Because you will have already gone through the time and cost of registering the mark, this may be attractive to someone who wants to use that mark for their own business immediately. By selling, you can receive payment which should reimburse you for your cost in registering the trade mark, as well as giving you value for the trade mark.

A third way to exploit or market your trade mark is to licence the mark. This will require you to enter a licence agreement with a licensee; giving them the right to use the trade mark in return for periodic payment. The licensing agreement will contain restrictions and limitations on this use of trade mark. For example, you may restrict use to a particular type of good, or to a particular geographical location.

A fourth way you can exploit your trade mark is by franchising. This is when you grow your business by entering a franchise agreement with a franchisee. This franchisee can then use your business model and IP rights such as trade name, business processes and so on, to run a business which carries the same appearance and standard as the original. Having a strong trade marked business name can help you increase the profitability of your franchise opportunities. However, franchising is only a viable opportunity for some businesses: you’ll have to have a proven business model which is capable of being replicated. For more information on franchising, read our Franchising Your Business FAQs and read about our franchising legal services.

How long does a trade mark last in the UK?

A trade mark granted by the IPO lasts 10 years. To extend your protection, you can renew your trade mark with the IPO in the six months before your trade mark expires, or in the six months after the expiry date. You can keep renewing this trade mark every 10 years. You’ll lose the right to the trade mark only if a third party challenges your mark for reasons such as non-use.

Note that if you renew in the six months after the expiry of your trade mark, you’ll have to pay a late renewal fee of £50.

What do you need to do after your trade mark has been registered?

Once your trade mark has been registered, you’re free to use the mark in the appropriate class. One important thing to do is to also monitor the use of the trade mark so you can quickly identify when a third party uses your trade mark.

You may choose to carry out this monitoring process yourself. However, there are trade mark watching services provided by companies who will monitor registration and use of trade marks which are similar or identical to yours, and will alert you so you can take legal action.

You should also check how you are using your trade mark. To make sure you don’t lose protection, your trade mark shouldn’t change, and also shouldn’t be used for goods/services which the mark isn’t registered for. If you do start using the trade mark for a purpose outside your registered class, and you include the ® symbol, this will be considered a criminal offence.

What happens if you need to correct or rectify your trade mark application or registration?

You can correct (or rectify) an error in your registered trade mark.

To rectify your registration, you need to file a Form TM26(R) with a statement of what grounds you are making the rectification, and any evidence to support these grounds. There is no fee to file this form.

Your TM26(R) form needs to be filed with the IPO. The IPO will consider your application and will decide whether to make the rectification. If the IPO refuses, you can request a hearing. It’s not compulsory for you to attend the hearing as you can send a trade mark solicitor on your behalf. As with the form to rectify, there is no fee for the hearing.

You can appeal the decision of the hearing officer if you think there has been an error on a point of law, or if there is an unreasonable decision on the facts. However, this appeal must be made within 28 days of the original decision.

Rectification can’t be used to alter your trade mark. Rectification is only available to correct:

• Words or terms used to describe the items in the list of services/goods which are obviously false, such that no one could be disadvantaged by the correction.
• The applicant’s/proprietor’s name or address is incorrect and there is evidence that it was entered in error.
• A genuine mistaken identity where the intention was always to name one person as the owner of the mark but a mistake led to another being named in error.

What happens about renewing a trade mark?

You need to renew your trade mark every 10 years if you want to benefit from its continued protection. It’s important to renew your trade mark in the six months before your trade mark expires, or six months after. Note that if you do renew in the six months after your expiry date, you’ll be charged a penalty of £50.

The cost of renewal is £200 for the first class in which your trade mark is registered in, and an additional £50 is payable for each extra class.

How can a trade mark be updated?

You can’t update a trade mark to alter the mark. If you want to use a more updated version of your current trade mark, you need to apply for a new trade mark. Starting from scratch is necessary to ensure that your updated mark isn’t already being used by someone else in the same class.

Can a trade mark be divided?

Yes – in the UK, you can register as joint owners of a trade mark.

If you are the sole owner of a trade mark, you can still divide a trade mark to have multiple owners of the trade mark. To divide your trade mark, you can transfer some of the trade mark by entering a partial assignment agreement. This may specify that the assignee has rights, interest, and title to the trade mark in relation to certain class of goods or services, or may specify they have the right in respect of a specific geographical territory.

It’s common for you to receive a lump sum payment in consideration for this transferred right. If you decide to transfer a trade mark, it’s advised that you register the transaction with the IPO by filing a TM16. A failure to do this will mean the assignee cannot rely on the trade mark because they aren’t included on the register as the (partial) owner.

An internationally registered trade mark can also be divided. To record a partial change in ownership, you need to file a Form MM5 with the WIPO. This will allow the register to be updated accordingly.

Can you surrender a trade mark?

Yes – you can surrender your trade mark in whole or in part. Surrendering will mean that you’re giving up your legal rights in the trade mark.

To give up all your rights, you should file a TM22. To only give up some of your rights, file form TM23 with the IPO.

Can you buy a trade mark from someone else?

Yes – you can buy a trade mark from someone else. You may want to do this if you don’t have your own mark, or if you want to start trade immediately using a trade mark without waiting for your own trade mark to be registered. Since the trade mark you’ll be buying will already be registered, there’s also a low chance of wasted cost arising from rejected applications.

How do you sell a trade mark?

To buy or sell a trade mark, you need to enter in to a ‘Trade Mark Purchase Agreement’ or a ‘Trade Mark Assignment’ agreement. This agreement will state that you are transferring all rights, title, and interest in the trade mark, to the other party (the buyer or assignee). The assignment needs to be recorded at the IPO.

Can a trade mark be transferred or assigned?

Yes – a trade mark can be transferred or assigned. You can transfer a trade mark by entering an assignment agreement with the assignee.

If there is a full transfer, you need to file a Form TM16. If there is a partial transfer, file a form TM16P.

How can a trade mark be mortgaged?

You can mortgage your trade mark by using it as security for a loan. The lender will then have a legal right in your trade mark until you fulfil your obligation to the lender (for example, by repaying your loan).

If you do mortgage your trade mark, you should register the mortgage using a form TM24. When the mortgage has been repaid, you should file form TM24C to cancel the details from the register.

If you have similar trade marks, can they be merged?

Practically, you could merge your marks to create a new mark. However, the new merged mark won’t be protected. You’ll need to apply to register this new mark. Starting from the beginning, you’ll need to conduct a search to see if there are similar or identical marks to the proposed new mark which are already registered in the same class.

Trade mark disputes

What happens if someone is using your trade mark without permission?

If someone uses your trade mark without permission, this is an IP infringement. It’s strongly advised that you seek legal advice and take action against the person committing the infringement.

You may find that once you’ve contacted the person and stated that you have a registered trade mark, which is being infringed by that person’s activity (or use of the same/similar mark), the person stops using the mark.

However, if the person doesn’t cease the infringing activity, you should bring proceedings against that person. This is a costly process as you’ll need to take the claim to the Intellectual Property Enterprise Court (IPEC) or the High Court (Patents Court). We can advise you if you want to pursue litigation in this way. Once you’ve received a decision from these courts, you can appeal to the Court of Appeal and the Supreme Court.

What happens if you think someone else is trying to trade mark something very similar to yours?

If you think someone is using or trying to use a trade mark similar to yours, you should contact the person to inform them that you’ve already registered your trade mark and use of such mark would be an infringement of your right. This should deter the person from using the trade mark, and encourage them to change their mark.

In addition, you should also monitor the Trade Marks Journal to monitor and oppose subsequent trade mark applications which could be similar to yours.

When you see that someone is using something close to your trade mark, it can be a good opportunity to review the formats of the marks you originally registered, in order to strengthen and update your IP protection strategies. Watch our video on how to assess your trade marks in the event of an infringement:

https://www.youtube.com/watch?v=YqlTRp-4VK8

However, you should note that the use of a similar mark by another person may not always be an infringement of your trade mark. The mark by the other person may be used for a class of goods or service which is different to the class for which you’ve registered your mark.

If the mark is similar and used in the same class of goods/services, and the person doesn’t agree to cease use of the mark upon request, you should take legal action against the person for infringement.

What can you do if you have been accused of trade mark infringement?

If you’ve been accused of trade mark infringement, it’s important to get legal advice to help you resolve the matter.

It may be the case that you’ve accidentally infringed on the trade mark of another party. This can happen if you’ve developed your business and trade mark, and unknowingly started using the trade mark for services/goods which your trade mark is not registered for. If a similar mark is registered in that area, your mark will be an infringement. Legal advice is therefore important to ascertain if this is the case. If it is, you’ll need to cease using that mark, or come to an agreement with the other person that allows you to use the trade mark.

Alternatively, you may be wholly innocent, and feel that the accusing party is mistaken. In which case, you will either need to:

• Deny the claim of infringement. This may require you to highlight how your mark is used differently, or is correctly registered for example.
• Counterclaim the person’s trade mark is an infringement on grounds that it isn’t valid, not used for the class it was registered for, or that it isn’t registered.

How do you know if it’s worth objecting to someone else’s trade mark?

The short answer is that it’s not easy to know whether it’s worth objecting to someone else’s trade mark. You should first conduct research to find out whether the trade mark is registered, and which class of goods/service it’s registered in.  If it’s registered and the use of the trade mark is compliant with the registration, it’s unlikely the person is infringing on your trade mark.

However, if the use and/or registration of that trade mark does overlap with yours, then you should get legal advice on whether it’s worth objecting to the trade mark: usually it is.

What is a coexistence agreement for trade marks?

A trade mark coexistence agreement is an agreement by two parties who use similar trade marks in different commercial sectors without infringing each other’s rights. Such an agreement is only possible if the use by two different people doesn’t confuse the public.

If you do decide to enter such an agreement, you should take time to consider the aspirations of both parties. Whilst you need to set boundaries as to the use of the trade mark to ensure no overlap, you’ll need to leave room to allow each party to grow into areas you both hope to expand into.

It’s important you don’t enter such an agreement unless you have a clear business plan, and know that you won’t be growing your mark to enter additional commercial sectors. If you do eventually grow but have entered a coexistence agreement, you may find that the scope of your growth is limited.

Can you give permission to someone to use your trade mark?

Yes. Giving someone permission to use your trade mark can be a very profitable way to exploit your trade mark.

As we’ve discussed above, you may choose to give someone the right to licence your trade mark. This would allow that person to use the mark in the course of their business. If you do choose this course of action, you should impose restrictions on this use. These restrictions may include a prohibition of permitting others to use the trade mark, prohibition of sub-licencing the trade mark, and restrictions on which services and goods the mark is used on. Similarly, you may impose positive obligations to report any infringement by third parties.

Alternatively, you can franchise your business which would give another person the right to use the trade mark. Similar to licencing, franchising will help grow your business by allowing you to establish multiple businesses which carry on your trade, under your name. As this helps build a presence and brand, you can build your reputation and also benefit from regular payments (in the form of royalties).

Who are earlier rights holders and why do they matter?

Earlier rights holders are people who can oppose the registration of your trade mark due to the rule of law. For example, a person with an unregistered mark could prevent registration of your mark if they can bring a claim of passing off against you. Similarly, the trade mark you seek to protect may actually be protected by virtue of copyright, design rights, or registered designs.

This is important because it means you’ll face opposition during the application to register your trade mark. Such an opposition may lead to a hearing taking place, which is a time-consuming and costly process. More importantly, if the hearing officer decides in favour of the party opposing registration of your trade mark, you won’t be able to register the mark. As the fees for a trade mark application are non-refundable, this can amount to a wasted cost.

Where can you find details of trade mark decisions in disputes?

The IPO keep a record of all trade mark decisions made regarding disputes. You can access these records online.

You can search for any decision using the British Library number. However, if you don’t know the British Library number, or are searching generally, you can search the IPO records according to type of hearing, the people or companies involved, and the date of the decision.

This record will give you a full comprehensive decision containing all the law considered by the hearing officer.

Can a registered trade mark be revoked?

Yes, a trade mark can be revoked. In the UK, a trade mark may be revoked if the mark was validly registered but something has happened since its registration which means it should be revoked.

An example of when it should be revoked is when the mark is not used and there is no proper reason for such non-use.

Alternatively, the trade mark may be revoked because it’s considered misleading, or that the trade mark has become a common name in the trade in which the goods/services are registered.

Can a trade mark be invalidated?

Yes, a trade mark can become invalidated if it’s considered that the mark shouldn’t have been registered to start with.

This would be the case if the mark failed to meet the criteria of being distinctive, or may have failed the criteria of being the only business/person using on this mark in the trade. Alternatively, there may be discovery of the same mark having been registered before your trade mark was registered.

Differences

What’s the difference between a trade mark and copyright?

A trade mark is an intellectual property right that gives you exclusive rights to a particular name or logo which is associated with your business or product. It’s mainly used for the purpose of public recognition. To be legally enforceable, it needs to be registered and renewed. A trade mark can be revoked for non-use.

This is different to copyright which protects original literary or artistic work from unauthorised reproduction. It expires after a set term, and it doesn’t matter if the original work is still in circulation or not. For more information on copyright, read our Copyright FAQs.

If you trade mark your product with a particular product name, this won’t stop another person creating the same product and selling it under a different product name, unless your product is also patented.

Copyright is also different because it arises automatically. However, to benefit from a trade mark, you need to apply to register your mark with the IPO.

What’s the difference between a trade mark and a trade name?

A trade name is a name under which you carry on your business. If you use a trade name, you face the risk of someone using the same trade name. This is because you don’t have exclusive rights to that name: meaning everyone is free to use the same trade name. Trade names are necessarily the same as business names. For example, although another company may register at Companies House under their legal business name that must be unique, they might use a different trading name for their everyday business (‘trading as’.) For more information about trade names and registering your business, read The Honest Guide to What You Do And Don’t Actually Need A Solicitor For – Part 1: Setting Up A Business.

A trade mark is different to a trading name because it’s a protected right. You can protect a trade name by registering it as a trade mark. Once registered, no one can use that same trade name (in the same class of goods or service).

Moreover, a trade mark is broader as it covers rights in any intellectual property which is associated with your identity.