ARE TRADE MARKS, INDUSTRIAL DESIGNS, COPYRIGHTS, AND PATENTS THE SAME THINGS?
No. Trade marks, industrial designs, copyrights, and patents protect different types of intellectual property. Things you might register as a trade mark are items that distinguish your goods and services from those of your competitors. Brand names, symbols, logos, slogans, a sound or the shape of goods could be a trade mark if they differentiate your goods, services or businesses. Industrial designs protect the physical appearance of a product, that is, the way it looks. A copyright protects an original artistic or literary work that you’ve created and gives you protection over who can use it. A patent protects an invention that you’ve come up with. For example, if you invent a new kind of vacuum cleaner, you would apply for a patent to protect the invention itself. If this vacuum cleaner has an appearance which has never been seen before, it could be protected as an industrial design. You would apply to register a trade mark to protect the brand name of the vacuum cleaner. Additionally, the TV commercial that you use to market the product may be protected by copyright.You can view a helpful infographic of these differences here.
WHY REGISTER A TRADE MARK?
A trade mark grants to its proprietor exclusive rights to use it in connection with the goods and service for which it is registered. Therefore, the owner of a trade mark may prevent unauthorised parties (copiers, imitators, infringers) from using it preventing chancers from stealing or taking advantage of your business name, logo, or slogan. By registering your trade mark, you are protecting your goodwill, reputation, investment on publicity and all the efforts put into your company to make it successful. When you register your trade mark, you can stop others from using or misappropriating not only the same business name or logo, but also those signs that might be confusingly similar to your business name and logo.
Protecting your unique name, word, phrase, symbol or logo is one of the most important investments in your business. Trade Marks are valuable assets, they are your property and as such they may be sold, franchised or you may grant a licence to authorise their use to a third party.
A registered trade mark may include the ® symbol next to it to warn others against using it. Using this symbol for an unregistered mark is an offence, this means that registered trade marks have a dissuasive effect on the public putting off unauthorised use. It also makes it much easier and less expensive to take legal action against unauthorised use. In the UK, an unregistered trade mark may be protected by the common law of “passing off”. However, to do this you need to prove reputation, a misrepresentation and damage. These requirements are very costly and difficult to prove, leaving SMEs unprotected it most cases.
MY COMPANY NAME IS REGISTERED AT COMPANIES HOUSE. DO I NEED TO REGISTER IT AS A TRADE MARK?
There is a common misconception that incorporating and establishing a business entitles the owner to exclusive use of the registered company name, or that this name grants them protection against the unauthorised use of the name by third parties. This is wrong. A company registration only serves to create a legal entity and does not protect in any way the name of the registered company. Similarly a registered domain does not grant any protection to your trade name. The only way to secure the protection of your trade name is through trade mark registration.
WHAT IS THE PROCESS FOR SECURING A TRADE MARK REGISTRATION?
Upon conducting a trade mark search and filing an application for registration with the corresponding Trade Mark Register, generally the process of registration takes between 6 to 12 months, depending on what, if any, legal issues arise during the process. The average wait time, if everything goes smoothly, is 6 months for an examiner from the Intellectual Property Office (IPO) to look over your application and issue a Certificate of registration. Once an application has been filed it will be examined and the examiner may raise objections on the basis of absolute grounds for refusal. This relates to circumstances where there is something inherently wrong with the trade mark such as being descriptive, deceptive or a generic term. If no objection arises the trade mark will be accepted and your application will proceed to publication. During this time third parties may oppose the registration. The Register will also carry out a search against their records to see if there are any conflicting trade marks. Even if no objection arises based on these earlier trade mark rights, in the event that, prior registered trade marks are found, the Register will notify to their owners for information purposes and it will be up to the owners of those conflicting marks to oppose to your registration during the publication of your trade mark. If no oppositions are filed your trade mark will proceed to registration and the Register will issue a Registration Certificate.
HOW LONG DOES MY TRADE MARK REGISTRATION LAST?
A trade mark remains registered for a period of ten years from the date it was filed. It might be renewed for further periods of ten years six months before its expiring date. This means that your trade mark may be in force indefinitely providing the trade mark is properly renewed. If we are your legal representation we will advise you accordingly before the expiring date of your trade mark registration.
HOW DO I MAKE SURE NO ONE ELSE REGISTERS SIMILAR TRADE MARKS?
If you choose us as your legal representative, we will notify you of any occasion where the Register cited your trade mark in searches carry out against their records, or alternatively, you may also subscribe to a trade mark watching service through us that will cover any jurisdiction for which your trade mark is protected.
WHAT DO I DO IF I SPOT THAT SOMEONE ELSE IS USING MY TRADE MARK OR A CONFUSINGLY SIMILAR MARK TO MINE?
You need to take professional advice as soon as possible if you realise someone is using an identical or confusingly similar mark to your trade mark in order to benefit from all the courses of action that may be open to you.
Any time lapses between the infringement being noted and action being taken can affect your case and be damaging to it. Simply contact TrademarkHub or Freeman Harris Ltd as soon as possible and we will help you to protect your trade mark rights.
HOW CAN I CHANGE THE DETAILS OF MY TRADE MARK APPLICATION?
Your trade mark application may only be amended for correcting the following:
- name or address of the applicant
- errors of wording or copying
- obvious mistakes, and only if that correction does not substantially affect the identity of the mark or extent the goods and services covered by the application.
This means that if at a later stage you want to expand scope of goods and service covered by your mark, you will need to file a different application with respect of the additional goods and services.
I HAVE RECEIVED AN INVOICE THAT SEEMS TO BE FROM ONE OF THE TM OFFICES. WHAT SHOULD I DO?
Please be aware that if we are your representative before one of the TM offices we will be placed on the official Register. They will then contact us on any matter in connection with your application or registration. So if you receive any communication from them contact us immediately as it is probably a fraudulent invoice from companies requesting payment for non-existent trade mark or design services.
CAN I APPLY TO REGISTER MY TRADE MARK THROUGH TRADEMARKHUB?
Yes you can. TrademarkHub standard package starts at £199 plus VAT and government filing fees for a UK trade mark and £349 plus VAT and government fees for an EU Trade Mark obtaining protection with the 28 EU countries. Visit our homepage to get started in applying for your trade mark through TrademarkHub. When you choose TrademarkHub, a specialist trade mark Solicitor or a qualified Trade Mark Attorney manages your trade mark filing and registration from the law firm of Freeman Harris Ltd in London, England.
HOW MUCH DOES IT COST TO REGISTER MY TRADE MARK?
Trade marks have a territorial nature which means that they need to be registered in each country individually with exceptions such as the EU Trade Mark Registration which grants protection throughout the 28 countries of the EU. The cost depends firstly on where you want to obtain protection. If you are seeking protection only in the UK, our fees for our legal service range from £199 (excluding VAT) plus £170 of government fees for filing one trade mark in one class for our Bronze Package, to £599 (excluding VAT) plus £170 government fees for our Gold Package. Secondly, trade marks are registered in connection with the goods and services to which it will be applied. These goods and services are classified according to an international classification system followed by most countries so your cost will depend on the number of classes that you include in your application for registration of a trade mark. This fee covers the filing of your trade mark up to and including registration providing no objections arise from the UKIPO, and no third parties oppose the registration of your trade mark.
If you want to secure registration in the 28 countries of the EU, we could to file a EU trade mark application through EUIPO, this is the European Trade Marks and Designs Register. Our charge for the filing and registration of a EU trade mark application range from £349 (excluding VAT) plus £800 official fees for filing one trade mark in one class with our Bronze Package to £699 (excluding VAT) plus £800 official fees with our Golden Package. This fees covers filing of your trade mark up to and including registration providing no serious objections arise from EUIPO and no third parties oppose the registration of your trade mark.
If you wish to protect your trade mark outside of the EU an application may be submitted with WIPO, this is the World Intellectual Property Organisation, or we may instruct an agent in another country to file an application through our vast network of Intellectual Property Providers Associates. We will do whichever is more cost efficient depending on the amount of countries you wish to file in. Please contact as for a quotation.
HOW LONG DOES IT TAKE TO PREPARE A TRADE MARK APPLICATION THROUGH TRADEMARKHUB?
Once you submit your application TrademarkHub will file your application as long as we have all the information we need from you. If we require additional information we will contact you. We endeavour to file your application within 24 hours of receiving all the required information. However, the UKIPO or EUIPO may take as long as 6 or 9 months to register the trade mark providing no serious objections are raised and no third parties oppose to your registration.
IS A SEARCH OF THE TRADE MARK REGISTER DATABASE NECESSARY BEFORE FILING?
It is advisable to conduct a search of the appropriate Intellectual Property Office database(s) before filing your application to determine if there is a registered or pending mark that is identical or confusingly similar to yours. You may search EUIPO databases for free from our website. However, not every identical or confusingly similar mark that might appear on this search prevent you from filing your mark. Likewise if no similar marks appear on a search it does not mean that your proposed trade mark is capable of registration. Trade mark searches should be conducted by trade mark specialists as their results may require in depth analysis, experience and expertise.
DO I HAVE TO HIRE A SOLICITOR WHEN FILING TO REGISTER MY TRADE MARK?
No, applicants do not need to be represented unless they do not have a place of business in the EU, or are not domiciled in the EU. However, if you decide to prepare and submit your own application, you must comply with all requirements of the trade mark statutes and rules, and you should be able to deal with any correspondence that may come from the Intellectual Property Offices or other trade mark representatives. Here at TrademarkHub your application will be managed by a trade mark solicitor or a qualified Trade Mark Attorney and we will keep you informed at every step, so you do not have to worry.
WHAT IS ASKED OF ME WHEN I START A TRADE MARK FILING APPLICATION?
You will need to provide us with the following:
- Name and address of the applicant, either a person or a legal entity.
- A description of goods and services to which the mark will be applied.
- A representation of the mark you want to protect.
TrademarkHub makes the process very easy for you, just visit our homepage to get started in applying for your trade mark.
IN WHICH CIRCUMSTANCES COULD I CLAIM PRIORITY?
If you have already filed your trade mark in another country which is a member to the Paris Convention (CUP) or the World Trade Organization (WTO), you may be able to claim priority from the date of the first application for the purpose of filing subsequent applications of that mark, providing you file any later application within 6 months from the date of the first application. This means that the effective filing date of that later application would be the same as the first application. So let’s say you filed a trade mark application in the USA on 23 October 2014 and you wanted now to file the same application in the UK or the EU, you would be able to claim priority and the effective date of filing would be the 23 October 2014 providing you filed it within the 6 months period mentioned.
If you wish to file a trade mark application in the UK or the EU and are unsure as to claiming priority or not in your case, don’t hesitate to contact us for guidance.
SHOULD I FILE AS AN INDIVIDUAL OR A CORPORATION?
You can file a Trade mark as an individual or a corporation in regard to ownership. You can always transfer ownership later. For example, if you are starting a company by yourself but ultimately want it to be in your company's name, you can file under your name and transfer it to your company later. The same is true in reverse.
WHAT IF YOU WANT TO REGISTER A TRADE MARK OUTSIDE OF THE EU OR INDIVIDUALLY IN A COUNTRY OF THE EU OTHER THAN THE UK?
If you wish to protect your trade mark outside of the EU or individually in any country of the EU other than the UK, we may instruct an agent to file an application in any part of the world through our vast network of Intellectual Property Associates. Alternatively, if you want to file in many countries we may submit an International Trade Mark Application with the World Intellectual Property Organisation (WIPO), designating countries which are party to this international registration system. Please contact us for a custom quotation.
HOW DO I ENFORCE MY TRADE MARK AGAINST INFRINGERS?
If someone is infringing your trade mark, you will need to send Cease and Desist letters and follow this through with legal action if they persist. We can help you enforce these Intellectual Property rights and you should contact us immediately to discuss this in further detail.
WHY USE TRADEMARKHUB?
TrademarkHub is the Intellectual Property department of Freeman Harris Ltd. Freeman Harris Ltd are well-aware of the importance of the protection of Intellectual Property Rights for business and innovators. Innovation creates jobs and new industries and its protection is vital for a good health and sustainability of our economy.
We strive to deliver the highest quality service to our clients at competitive prices when providing legal and technical assistance in the registration of Trade Marks and by helping to raise awareness of their value and the importance of registration.
We offer a comprehensive range of price packages to ensure that we cover the needs, requirements, and budgets of all our clients from SMEs to big multinationals.
If you choose Freeman Harris Solicitors you will be advised and guided by solicitors and lawyers highly experienced and knowledgeable in their field of expertise, and regulated by the Solicitors Regulation Authority.