UK: All Businesses have Intellectual Property: Part 2

Last Updated: 16 September 2004
Article by Emma Lambert
This article is part of a series: Click All Businesses have Intellectual Property: Part 1 for the previous article.

All businesses have a trading name. Most modern businesses also have a website domain name and more often than not, one that is the same as the trading name. The importance of these two names cannot be stressed enough – both underpin your business by clearly identifying it so customers can find you and your products, which increases the value of your business by developing its goodwill and reputation.

Failure to adequately protect these names can be catastrophic for a business. It can lead to dilution of your brand identity in the marketplace and could ultimately result in reduced sales and a loss of market share for your business. A complete rebrand may be the only solution, but this is time consuming and expensive.

In the second of her three part series, Emma Lambert explains how to use and protect your names to strengthen your market position.

Trade Marks

  • What is a Trade Mark?

A trade mark is a sign or device that is capable of distinguishing one business (or brand) from another. A trade mark can be made up of words, signs, shapes and numbers1. It can also include personal names.

Pictons’ IP Team has written extensively on trade marks in recent months and more information can be found in the Intellectual Property section of our website at

  • Who owns a Trade Mark?

A trade mark is owned by the person or business who has registered it and/or used it for long enough to have established a reputation in it (unless another business was using the name first, in which case that business can claim priority).

Trade Mark ownership becomes more complicated when you consider that copyright may also subsist in your corporate logo. Copyright exists in drawings, logos, pictures and stylised words which, when used in the course of business, can identify your business and the goods or services you provide. So, although you as the business owner may own the trade mark, you may not own the copyright as you did not design the logo yourself .

Often problems arise when a business commissions someone else to design a logo. Just because you are the commissioner does not mean you automatically own the copyright, enabling you to register it as a trade mark2.

So, for the purposes of logos created by designers or employees the same rules apply as for copyright - if an external designer created your logo, it may be that the designer owns the rights in the design and you (as the commissioner) only have an implied licence to use it in certain circumstances. That is, unless a formal agreement has been made with the designer, which assigns all rights to you. However, if one of your employees created your logo as part of their employment, copyright will be owned by the company unless circumstances dictate otherwise.

  • How can you protect a Trade Mark?

As with designs, trade marks can be registered and unregistered. Their rights and protection differ depending on their status:

Registered Trade Marks

The best form of protection for a trade mark is to register it. It is always far easier to claim infringement if you have a certificate of ownership with your name on it. Plus, the process of trade mark registration includes a search of the trade mark register which will quickly tell you if another business has already registered the mark you want to use for your goods or services. (If a third party has registered the trade mark you have been using there are various strategic options that may be available to you. Your IP Specialist will be able to explain those options.)

It is possible to obtain trade mark registration in almost every country around the world. The Community Trade Mark is popular with UK businesses and now covers all 25 countries of the EU. As with designs, you can check trade mark registrations online. Go to the Patents Office website at to search for UK trade marks or the OHIM (the Office for Harmonisation in the Internal Market) website at to search for Community Trade Marks.

Unregistered Trade Marks

Trade names, logos and brand names that are unregistered can be protected in the UK by asserting a claim of ‘passing off’. To increase your chance of success, you need to prove you have gained a reputation in the name with evidence such as marketing, advertising and/or turnover figures. Gathering such evidence from your clients and the marketplace can be a costly exercise.

If your mark is unregistered, it is possible to warn people off, by marking it with TM. You can indicate that a trade mark is registered by printing ® next to it. However, please note that it is a criminal offence to mark an unregistered trade mark with ®. The differences between registered and unregistered trade marks are explored further in my previous article ‘Trade Registration – v – Trade Use’ (to read this article please click on the 'Next Page' link at the bottom of this page) .

  • General Trade Mark protection points

If you have a trade mark – registered or unregistered – use it as much as possible on your marketing materials such as headed notepaper, business cards, packaging and your website. The more exposure you get, the faster you will develop a reputation. Make sure you keep the representation of your mark consistent – use the same colours, font, design and name. Varying the way in which the trade mark appears dilutes its value and can make it difficult to claim trade mark infringement.

To maintain a strong brand it is also important to oppose applications for trade marks that are identical or similar to your own – particularly when the applicants are trading in similar goods or services. An excellent, low maintenance way of preventing similar marks entering the register is to use a service like Pictons’ Watch It! Service. Services such as this monitor trade mark applications in each geographical territory you trade in. You will receive a regular update of all marks applied for that are identical or similar to yours. If you use the Pictons’ Watch It! Service, your contact in the IP/IT Team will advise you as to which applications you should take action against and those you can ignore. If you value your brand and take brand protection seriously, this is an essential yet cheap tool.

And remember the saying "Use it or lose it". If you have not used a registered trade mark for 5 years, a third party can apply to have your mark revoked. If your trade mark is unregistered then sustained usage is even more important. There are cases where rights in an unregistered mark have been lost within 3 years of non-use as the goodwill attached to the mark had evaporated.

The final tip, which applies to all IPRs, is to keep clear and up-to-date records. Record the date that the name or logo was created, who created it, when it was first used/marketed and whether or not it was registered (so you can keep track of renewal dates). Your IP specialist will track renewal dates for you but having your own record allows you to regularly review your intellectual property portfolio – this is particularly useful when budgeting for renewals. It will also help you to make decisions about whether renewal of a trade mark is appropriate, considering the present direction of your business.

Domain Names

Much of my advice about trade marks applies equally to domain names as they are the way your company is identified and located on the World Wide Web.

  • What is a Domain Name?

A domain name is a means of identifying an Internet website. Each domain name sits on what is called an Internet Protocol (IP) address – a sequence of numbers that directs you to the computer server that is hosting the website. The Domain Name System translates domain names into the IP address.

The ‘name’ part of your domain name is referred to as the second level domain name. So, in, ‘pictons’ is the second level domain name. Top level domain names (TLDs) are generally split into two types – generic and country codes. Generic TLDs are .com, .org and .edu and can be used globally by entities that comply with the registration requirements. Country Codes are designated to countries. Examples are .uk for the United Kingdom, .tv for Tuvalu, and .jp for Japan.

No two IP addresses can be the same and so each domain name is unique. However, it is possible to have two identical second level domain names as long as the TLD is different – for example, and Therefore, a third party can register a domain name which includes your trading name/trade mark.

  • Who owns a Domain Name?

The basic principle is that the person who registers a domain name owns it unless there is evidence to the contrary. For example, registrations in ‘bad faith’ can be reversed where the sole purpose of the registration was to extract payment from a business legitimately using a similar or identical name. In May’s edition of "In The Know" we wrote about Google obtaining the domain name "Froogle" from a third party registrant who had no legitimate interest in the name. This is a very good illustration of how bad faith registrations are being overturned in practice. In fact, Nominet – the registrar for domain names – provides a free dispute resolution service to handle these conflicts over ownership.

To avoid a name being registered by a third party when setting up a new company, it is important to register the company name and domain name on the same day. We have had a number of clients who neglected to do this and discovered, the very next day, that a third party had registered their name. We can only conclude that the third parties making these registrations are monitoring the Companies House register.

  • How can you protect a Domain Name?

The best way of protecting a domain name is to use it. Even if it is not your main domain name, have it pointing at your server to pick up traffic. Pictons owns and – is the domain name we have on our stationery but is used to capture customers who type in this address instead of the alternative. We recommend that clients try to register both domain names and use them in this way if they can.

The best domain names are those which are identical to your business name or your brand as they maintain consistency. Consistent use of your business and brand names will give more credence to a claim of bad faith registration or similar.

Also, when registering a domain name, consider how your customers identify your business. Perhaps they refer to you as "Joes" rather than "Joe Bloggs" in which case it is more likely that your customers will look for "Joes" when trying to find you on the web. So, the domain names and are also worth registering to divert traffic to your website. Registration of additional domain names like this can be a shrewd move. (If you discover your customers refer to you other than by your company name, you may wish to consider rebranding. Your IP specialist will be able to advise you on this.)

When you apply to register your domain name you may discover that someone else has already registered it. If this is the case you should consider your usage to date and how the domain name is being used by the registrant. It may be possible to retrieve it if you have been using it legitimately and have developed a reputation in it. Alternatively, you could use a service such as the Pictons’ Watch It! Service to monitor domain names that are identical to yours or contain your name. As these names come onto the market, having not been renewed by their present owner, you can register them yourself.

The main piece of advice I can give in regard to your trade marks and domain names is to ensure that at all levels of your business, use of your trade mark is consistent – the same colours, font, design and name. Use your trade mark whenever you can. Each time it is used you are protecting it and a step closer to making sure no one else can.

In the final part of this series I will explain how to identify and protect patents and know-how.

©Pictons 2004. First published in Pictons’ "In the Know" email newsletter.


1. There is also a debate as to whether certain sounds, smells and colours can be trade marks.

2. The fact that copyright subsists in trade marks which are stylised can be confusing. If you would like more information please contact your IP Specialist or telephone me on 01727 798014.

Pictons Solicitors LLP is regulated by the Law Society. The information in this article is correct at the time of publication in June 2004. 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.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

This article is part of a series: Click All Businesses have Intellectual Property: Part 1 for the previous article.
This article is part of a series: Click All Businesses have Intellectual Property: Part 3 for the next article.
In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.