UK: Trade Mark Registration: A Guide for SMEs

The Golden Rule

The golden rule, when selecting a name for your business or your brands, particularly if you intend to register the name as a trade mark, is that it should not describe the goods and services to which it will be applied. For example, it is unlikely that I would be able to register 'FLOWERS' as a trade mark, if my business was selling or growing flowers, as the name describes the goods I sell.

Good trade marks are ones that are made up or totally unrelated to the goods and services sold. Examples are Kodak for cameras, Amazon for books and Apple for computers. These names are ‘distinct’ and ‘distinguish’ these companies and their goods and services from their competitors. The extent to which a company can distinguish itself from its competition will significantly influence its customer loyalty and in turn increase the goodwill in the business

Remember: a good business and brand name will not just enable you to obtain trade mark registration, it will single you out from the crowd and increase the value of your business. A strong business name is an extremely valuable asset.

If a business name describes the goods and services it provides - all is not lost. Through clever marketing it may still be possible to obtain trade mark protection at a later date. Protection is obtained (and a reputation enhanced) through consistent use of the name which helps customers to distinguish your goods and services from those of your competitors. In other words, your company name or brand name has become distinct through use. To do this quickly will require a good marketing strategy and in any event a substantial amount of evidence to present to the Patent Office in support of your application. This process is administratively laborious, drawn out and can be expensive so, if possible, avoid it.

Once you have a good name, and perhaps a good corporate logo, you next need to consider in which jurisdictions you wish to obtain trade mark protection. If you only trade in the United Kingdom, and have no plans to trade abroad, a UK trade mark may be sufficient. Once you have decided where you want protection, it is prudent to carry out a search of these jurisdictions before making a trade mark application. To do this you need to know for what goods and services you will be using the name.

If you think you may want to trade internationally in the future, you can first make an application in the UK and then, within 6 months of that application, make further international applications which will date back to the UK one. Alternatively, you can simply make additional international trade mark applications when you move into new markets, however, you run the risk of losing out to competitors in the new territory who already have a registration for your mark in that territory. If you would like to learn more about international trade mark protection you should contact your IP specialist.

Before you can make an application or even search to see if your trade mark is available to register, you must be clear for what goods and services you intend to use your trade mark.

Different goods and services are divided into classes. There are 45 in total. Classes 1 to 34 are for goods and classes 35 to 45 are for services. These classes are recognised internationally and enable you to identify conflicting marks. Once you have identified the classes your goods fall into, a trade mark attorney can draft a specification. A specification is a more detailed description of the goods and services. You should think about the specifications carefully to be sure you have covered your present goods and services and those you may provide in the future. Your IP specialist can discuss this with you in more detail if you decide to make an application.

If you Click HERE you can read an article that describes the difficulties trade mark owners can face if they have not fully considered their specification.

If you want to get a feel for the UK market and want to find out what else is on the register, you can search The Patent Office database online. This basic search will provide you with details of all the registered UK trade marks that are identical to your mark or contain your mark.

For example, I searched the database for ‘FLOWERS’. Let us say I want to use the trade mark FLOWERS for soft furnishings including threads (class 23), textiles (class 24) and lace (class 26).

The database has produced a list of all identical marks together with the marks that contain Flowers, such as ‘FLOWERS BEST BITTER’ which is owned by Brandbrew S.A. I can see there are trade marks on the register that are identical and similar to mine. Now I need to check whether the classes the trade marks are registered in, are identical or similar to mine. There are no registrations for classes 23, 24 and 26. FLOWERS BEST BITTER is registered for Class 32 which, amongst other things includes beers, minerals and aerated waters and other non- alcoholic drinks… The specification for FLOWERS BEST BITTER is Beer, ale, stout, porter and lager. It is fairly safe to say that this registration would not present a problem if I applied to register FLOWERS for classes 23, 24 and 26.

If there were trade marks registered in one or all of the same classes and, more importantly, the specification of the goods within the class was identical or similar to mine, I could be prevented from obtaining a trade mark application. It may be possible to argue that the goods are dissimilar but this would depend on the specification of the earlier registration.

If you would like to know whether your mark is distinct and distinguishes your goods or services, you can use The Patent Office Search and Advisory Service. The Patent Office will search the UK database, as you can yourself, but it will pick out the trade marks on the register that may be problematic. The examiner dealing with your search will provide a written report explaining why he/she has identified particular trade marks. The Patent Office will also state if there are likely to be any statutory objections; for example the trade mark is descriptive of the goods and services. You also have the opportunity to speak to the examiner to discuss ways you can avoid problems – if at all. Having said that, the report is not binding and so if the results are adverse you can still proceed with an application but you may need to provide evidence to support the application and will certainly need to do so if it faces opposition during the examination stages.

There is a nominal fee for The Patent Office Search and Advisory Service. Your IP specialist or trade mark attorney can provide a similar service and advise you on the results. If you just want an idea of what is already on the UK register and to have The Patent Office’s initial response to your application, this Service can be a good start.

Alternatively, you can instruct your lawyers or trade mark attorneys to conduct a full clearance search prior to making an application. This search will be more expensive than The Patent Office search, however, it will include identical and similar marks, and phonetically similar marks. The search will also pick up international conflicts, which are worth knowing about if you are considering an international application at a later date (perhaps using the UK application date to claim priority).

You should note that infringement proceedings can be brought if your mark is considered ‘substantially similar to’ as well as ‘identical to’ another registered trade mark. So, if you intend to make an application, a full clearance search of this kind is important, even if you have already used the Patent Office Search and Advisory Service.

If you wish to register a logo as a trade mark, rather than simply a word mark (just the word without any particular font or formatting) then the logo can be searched as well. Occasionally, clients choose to register both the logo and the word mark to optimise their protection.

The next stage is for the trade mark to be filed. The application will first be examined and then published. A Patent Office examiner will consider the application and will carry out an additional search of the register. If the examiner believes the application does not meet registration requirements, the applicant will be given an opportunity to make representations to the examiner as to why the application should proceed as drafted, or to amend the application itself. If the requirements for registration are then met, the application will be accepted and published.

Once published, there will be a period of 3 months when third parties can oppose the application. This is likely to be because they have registered or use a trade mark identical or similar to the one applied for, for identical or similar goods or services. You should be aware that the proprietors of unregistered trade marks can also oppose an application. Many trade mark owners (again registered or unregistered) use a Watch Service to ensure they are informed every time an application is made for a trade mark similar to their own. This provides them with the opportunity to oppose the application if they wish.

If the application does not face opposition either at the examination or publication stages, it will proceed to registration.

If you are going to trade in the European Community you can make individual applications in each of the Member States in which you want protection. If you want protection in more than 3 States, it is cost effective to apply for a Community Trade Mark which will cover all 25 Member States. The downside of this registration procedure is that if an opposition to your application is upheld in just 1 of the 25 States, the application will fall in all and you will have to make individual applications to States in which you particularly require protection. This is where extensive trade mark clearance searches made prior to application are particularly important.

If you require further information about registration outside the EU or clarification about the procedure and strategy concerned with trade mark protection and registration generally, contact Emma Lambert.

© Pictons Solicitors LLP 2004

Pictons Solicitors is regulated by the Law Society. The information in this article is correct at the time of publication. Every care is taken in the preparation of this article. However, no responsibility can be accepted to any person who acts on the basis of information contained in it. You are recommended to obtain specific advice in respect of individual cases.