Guide to trade marking and protecting your brand’s IP
Launching your own business is undeniably exciting, but let’s be honest, it comes with a fair share of challenges. And one significant hurdle that can trip up even the most seasoned business owners? Registering a trade mark. If you’ve ever wondered if trade marking is viable or worthwhile, or fretting over trademark paperwork and the associated costs, you’re certainly not alone.
It won’t be a surprise that I’m a big advocate of protecting your brand assets and intellectual property. A few years back, I took the plunge and went through the trade mark process to register my company name, Beehive Green. Through that journey, I realised how daunting the process can be, especially for small brands and charities.
That’s why I created this blog. Legal matters can be confusing when you’re not in the know, so I chatted with an expert – IP lawyer Rina Sond – to shed some light on the trade marking process. In this blog, Rina demystifies the world of trade marks and confronts concerns head-on.
Ready to tackle trade marking with confidence? Let’s dive in!
Beehive Green® is a registered brand name
Hi Rina! For those of us who aren’t in the know, what exactly is a trade mark?
A trade mark is a sign which makes your business stand out from your competition. It is usually your business name (e.g. Starbucks), your logo (e.g. Apple). However, it can also be your specific brand colours (e.g. Cadbury’s purple), a sound (e.g. MGM lion’s roar) or in rare cases, even a smell (e.g. the smell of grass for tennis balls!) It can be one or more of these things.
Why do I need to register my trade mark? Are there any benefits?
The advantages of registering a trade mark are many – but the main one is that registration gives you the exclusive right to use your brand in a particular industry or area of goods or services. Having a registered trade mark means that this is on record and others will see that if they try to use or register the same or a similar name or logo.
In short, a registered mark puts you in a much stronger position to stop someone else from using your name or logo. And as your brand becomes more recognised and attracts a loyal customer base, it will become more valuable. That registration will protect you, give you a competitive edge and help to bolster that value. Finally, if you have registered rights, then you can leverage those by monetising your brand through different ways (more on this below).
Let’s get practical. Is trade mark registration worthwhile for a small brand or small charity? How long does the process take? And (what everyone wants to know) how much does it cost?
Small businesses can definitely benefit from registering a trade mark, whatever size or stage you are at. Trademarks are the one type of Intellectual Property (IP) right that can apply to every business that wants to build a brand and become known for that thing they do.
In the UK, the process for registering a trade mark is generally between 4 and 6 months. Although, if there are any issues the process can be longer.
Costs vary depending on which service you use and the number of areas (classes) of goods or services you want to protect your mark under. On average, you could expect to pay anywhere between £500 to £1,500 per UK trade mark. Some services work on a single fixed price, whereas others break down their charges into professional fees for dealing with the process and the official filing fees.
Any advice on how to register a trade mark yourself? Is it possible to DIY?
It is possible to register a trade mark yourself. However, if you are unfamiliar with the process, then it can be daunting and tricky to understand the various terminologies used during the trade mark process.
As a trade mark application cannot be changed once submitted, it is important to get it right. So if you are not sure which classes of goods or services would apply to your business, then it is always best to consult a specialist IP lawyer or trade mark attorney.
It is also worth noting that trade mark protection only applies in those countries in which you register your mark. So if you plan to expand your business outside of the UK, or if you use suppliers based overseas, then it is advisable to get appropriate advice. This is because the timeframes around protection do matter, and this can influence the overall approach to your trade mark strategy.
When should you register a trade mark? Chicken and the egg question... what should come first in the branding journey – registering a trade mark or commissioning a visual identity?
It is definitely worth understanding whether your proposed name or logo will be capable of being registered as a trade mark before you commission a visual identity. This is because it needs to meet certain criteria to be accepted for trade mark registration. A business would not want to find itself heavily investing in a brand, only to find that they can’t actually properly protect it! A key factor is to ensure that the end design is distinctive.
What is the trade mark process? Are there any challenges that can be expected?
Yes, there can be hurdles at two stages of the trade mark application process:
Where the trade mark fails to meet the acceptance criteria when the application is submitted; and
where the mark clashes with an earlier registered trade mark, the owner of that mark can object to your application. In a worst case scenario, this could mean that you have to withdraw your application, losing out on protection, and possibly even having to re-brand your entire business! Unfortunately, I have seen this happen to a client who failed to protect his brand early on!
This is why taking expert advice can be so useful, as we have experience of the process, the latest guidance on what is and isn’t acceptable as a trade mark and the strategies to pre-empt and deal with these types of issues before they arise.
With everything we’ve discussed in mind, what are your top tips for successful trade mark registration?
My top three tips would be:
Make sure your proposed mark is distinctive and avoid anything overly descriptive of what you do or sell.
Do your research (also known as clearance searches or freedom to operate). You will want to ensure that your brand name stands out and isn’t the same as or similar to any other brand.
Think carefully about your trade mark classes, and ensure that you get these right. You may also want to plan ahead for any expansion of products or services that you may want to offer in future.
What’s the difference between ™ and ® symbols? I know the answer, but find it often comes as a surprise to people!
You can use the ™ symbol to show others that you are using a particular name or logo as an unregistered trade mark in your business.
Once you have registered your trade mark, you can use the ® symbol instead. You must be careful not to use this symbol if your mark isn’t registered, as this would be unlawful.
So, I’ve registered a trade mark. What happens next? How long does my trade mark last? And what if someone infringes on my trade mark?
Once you have a trade mark registered, the registration lasts for 10 years. However, it can be renewed every 10 years so that protection lasts forever.
It is important to monitor the market and keep an eye on your competition, to ensure that no one copies your mark or creates anything similar. If you notice anyone using your mark or something which is confusingly similar, then you should take advice and ideally take action to enforce your rights. There are monitoring services available to help with this, or you can simply set up a Google alert for your brand name. In addition, the IP Office will normally write to you if anyone applies for the same or similar trade mark in the UK.
Rina, you’ve got loads of experience in the IP world. Thanks for sharing your expertise! To wrap up, tell me what makes you so passionate about your industry.
I love helping businesses to understand their IP rights and to use those IP assets to their fullest potential. You only need to look at the top 100 brands out there to see the possibilities of what can be done to monetise those IP rights and create valuable brands. I’m a strong believer that all businesses should have access to the information about the different ways in which you can commercialise what you have developed, to create multiple revenue streams to help your business grow. Ultimately, having that knowledge can help you build something that can add real value to your business, especially if your plan is to sell it in future.
If you’d like help with registering your trade mark, or want to know more about how you can protect and monetise your IP, then do get in touch with me!
Rina Sond
About Rina Sond
Rina Sond runs Intangen, an IP consultancy business. A former law firm partner and recommended lawyer in the Legal 500 legal directory, she left her corporate legal career after 20+ years, to focus on her passion for helping innovative, growing businesses leverage their IP to drive growth and profitability. Adding immense worth to hundreds of businesses, her mission is to help 100,000 businesses harness the power of their IP.
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