For many companies, their brand is their most valuable asset. Whilst the core function of a trade mark is to distinguish goods/services, trade marks can also be highly valuable assets; capable of being bought, licensed or used as a security interest in financial transactions.
Trade marks are also essential to developing the brand loyalty, recognition and goodwill that results in consumers making repeat purchases. Trade marks can convey multiple messages to consumers, including quality, brand ethos, ethical stance, environmental considerations and reputation.
So how do you obtain a trade mark registration?
First and foremost, you must choose your trade mark.
Trade marks can take many forms, including word marks (e.g. Nike), logos (e.g. Nike’s “Swoosh”) and slogans (e.g. “Just do it”). There are also less traditional forms, such as shapes, colours, sounds, holograms or motion marks.
The key to choosing a successful trade mark is to ensure that it is unique and memorable.
Some of the most successful brands are invented words (e.g. Lego), though ordinary dictionary words (e.g. Apple) can become highly successful trade marks when used in connection with goods/services unrelated to the meaning of that word.
However, not all trade marks can be registered. A trade mark will be refused registration if it describes the goods/services for which protection is sought, or if it is devoid of distinctive character in connection with those goods/services (e.g. because it consists of purely promotional language, such as ‘BEST’).
For example, Tasty would not be registrable in connection with food or drink, and whilst the mark Apple is registrable in connection with telecommunications apparatus and services, it would not be registrable in connection with fruit.
Whilst it may, from a marketing perspective, seem tempting to choose a mark which immediately informs consumers what a company does, or what goods/services it offers, such marks are generally not inherently registrable.
No business is allowed to obtain an exclusive right in a word which other businesses would wish to legitimately use to describe their own goods/services.
Your trade mark should also not be offensive or misleading.
Once a potential trade mark has been chosen, and before any significant amounts are spent on marketing materials, advertising, packaging, etc., it is advisable to have trade mark availability searches conducted.
Trade mark availability searches identify whether any third parties have prior rights in marks identical/similar to the chosen mark, in connection with identical/similar goods/services.
Any such prior rights could pose infringement risks to the use, or potential obstacles to the registration, of a proposed mark.
By identifying any such marks early on in the process of adopting a trade mark, the risks of running into difficulties further down the line (including liability for trade mark infringement and the associated damages) are reduced.
Once a chosen trade mark has been cleared for use, the next step is to file an application to register that mark.
A trade mark registration is essential to obtaining the legal monopoly required to prevent third parties using or registering a mark that is identical/similar to that mark, in connection with identical/similar goods/services.
Trade marks are generally protected on a country-by-country basis, though it can be possible to obtain them on a regional basis (for example, an EU trade mark registration provides protection in all EU member states).
The procedures for obtaining a registration also vary from country-to-country.
In the UK, once an application has been filed, the UK Intellectual Property Office (UK IPO) will examine the application to ensure that the mark is inherently registrable and that the application satisfies various formalities requirements.
Once accepted, the application is published for opposition purposes. During the opposition period, third parties may oppose an application on the basis of their earlier rights.
Provided no oppositions are encountered, the application will proceed to registration in the UK for an initial period of ten years. A trade mark registration can last indefinitely, provided it is renewed every ten years, and its validity is not challenged.
If you are looking to adopt and register a new trade mark, it is always advisable to seek the advice of a Chartered Trade Mark Attorney.
At Dehns, we can advise as to the inherent registrability of a proposed trade mark and provide guidance as to the goods/services for which protection should be sought.
Once the proposed mark has been settled upon, we can arrange/conduct the necessary trade mark availability searches, devise appropriate filing strategies, and handle/oversee the filing of both national and overseas trade mark applications.