An essential guide to trademark legislation
10 January 2017
Author: Anton Dell
Brands often begin with an identifier, whether it be a unique slogan or distinctive logo, to set the company apart from its competitors. Now that you’ve got your brand identity, logo and decided upon a name, it’s time to register your company nationally or internationally and make things official.
Every brand reaches the stage where they are unsure of the rights that come with building a sustainable product. Patents and trademarks are incredibly important to a brand’s growth. We’ve a step-by-step guide on just how to mark your brand and logo, for those in UK, Europe as well as internationally. Companies eager to protect their work should consider filing for a trademark to further development. These points will help you to understand what a trademark is and also, to advise on how exactly to go about trademarking your brand.
There are many differences between trademarks, patents and copyright. To clarify, a trademark is only in place to protect the brands name and logo on goods and services. A patent however, simply protects an invention and copyright, typically refers to protecting original written work or art, the Mona Lisa for example.
You have three options for trademarks:
When seeking trademark protection, you have three single options to choose from. The first is on a regional scale, which only safeguards the brands rights in specific countries. Effectively, this means that if your brand is solely registered to the UK, it is only covered within the UK. Then, there is the International route (IR), which defends the company’s rights across an international scale, this only covers the brand within the chosen few countries. And lastly, the European-wide route (EU TM), which defends the brands rights throughout Europe.
If the aim is simply to protect your brands identity within the UK i.e. the logo, company name or brand name - for example, the Anton Dell Fashion Consultancy is the brand name but we also have a logo specific to the brand, so we require two separate trademarks. Trademark is typically the best option as the law protects the company from misuse. Anyone caught using the identity without your permission could face prosecution and the average cost of registering a company with a UK trademark varies dependent on requirements. There are however these few steps to take before registering.
• Before registering your trademark:
Please be sure to double check that all the information submitted is correct, as you cannot change a mark once it has been filed for. Often, a similar trademark may already be in use causing some confusion because of this, It is advised that you double-check no other companies have registered the same trademark for goods or services. This is easy to check and is free to carry out via www.ipo.gov.uk. You must describe your goods and services very clearly. In the event you feel your mark is not distinctive, nor descriptive enough for the goods/services on offer, the best free source of information comes from the ‘Manual of Trademark Practice’ (link) with UKIPO. Refer to the UKIPO’s classification guide for references.
• Registering your trademark in the UK: Your trademark can be registered via the country in questions ‘Patent and Trademark Office’ or if preferable, through an attorney. However, if an attorney has not carried out professional clearance necessary, the ‘RightStart’ application helps to check whether your mark is available for use. Ranging in price from £170-200, the ‘RightStart’ application helps prospective brands to check double check the availability of their brand identity.
The procedure of applying for registry can take up to an average of 4 months for completion.
• Once your trademark is registered (I’m registered, now what do I do?) Success! Your company has been registered for a trademark. You now legally own all of the rights to your brand name and logo. From here onwards you will be able to take legal action toward anyone caught using your brand identity without permission. However, within the first two months that the application is approved, anybody has the right to file an opposition against this, in the event this occurs do seek legal advice. Although theoretically, trademarks are an ongoing agreement, it is important that the registration be renewed every 10 years or the trademark will no longer be valid.
An international trademark differs from the UK specific registration, as it covers more ground for brands and also, offers more benefits. For example, an international mark grants the brand with less to pay overall for the application process, allows faster results for approval, and lower agent costs.
• Register, before you register: To register on an international scale, brands must already have an existing application with one of the member countries, similarly to the UK specific trademark. This means that brands cannot simply apply for an international trademark and must first have an ongoing or past registry with the national office. If your original application for single country trademarks was in EU, an application must be filed via the EUIPO.
• Once you’ve applied for registration: Once you register, the prospective application is examined by WIPO and forwarded to the chosen countries offices. They have final say, and decide whether or not the trademark is accepted and will be registered. However brands waiting tirelessly for a result, can find a status report via ROMARIN or Madrid Real Time Status.
• Costs: The overall cost to apply is solely dependent on the number of countries applied for the mark to be protected in. You must list each of the countries in which you wish to have your trademark listed in. It’s advisable to apply for several countries at once as it’s the cheaper option and saves the company from applying for several individual applications on separate occasions. Unfortunately, it’s difficult to decipher the exact fees as it differs a great deal, you can however find an estimate for your brand on the WIPO’s website.
• What happens if my application is rejected: You may hit a snag and be rejected by a particular country, but fear not. If your registration is rejected in a designated country, but not the others, your registration will still be valid in all expect that one rejected country.
The European trademark covers your brand against countries within the European Union. Prospective members should apply via the European Union Intellectual Property Office (EUIPO), which is based in Spain. Following the Brexit vote however, British brands will probably need to apply for a UK trademark, then an EU trademark separately. As an EU trademark will legally no longer cover the UK.
• How to apply To apply for a European Trademark is simple, the application form can be found on the EUIPO website and normal fees range from 850 euros upwards. Hopeful members can print the form, fill it out and return it or simply apply online, being sure to use one of the 23 official languages of the EU. It’s also advised to include different second language from the 5 official languages used at EUIPO.
• Fees With fees ranging from 850 euros, the EUTM Trademark applications do have an additional cost for specific classes, which are between 50 and 150 euros. Classes, refer to the goods and services classification. When registering a trademark you must indicate in which category you would like to register your name, for example there can be an Anton Dell musical instrument brand simultaneously with the Anton Dell Fashion Consultancy, you will be charged on the basis of your chosen class category. This means the trademark protects your brand against someone launching the same brand in the same industry category and also, if you have trademarked your brand name, will protect the rights to the brand name also. The full list of classes can be found here.
• What is ‘collective mark’? Rich Stim, Attorney, Nolo says: “A collective mark is a symbol, label, word, phrase, or other distinguishing mark that signifies membership in an organisation or that identifies goods or services that originate from the member organisation (a collective trademark). For example, the letters ILGWU on a shirt are a collective mark identifying the shirt as a product of members of the International Ladies Garment Workers Union. It distinguishes that shirt from those made by nonunion shops”.
The collective mark application fee is a specific type of trademark, they are used to identify products, which share a certain quality and range from 50 to 1500 euros in price. Collective marks can be used to build consumer confidence in the products or services.
• Who can file for an EU Trademark? Anyone is eligible for the EU Trademark via the EUIPO. However, companies must appoint a representative to front the company before the Office, if they do not have a permanent place of business or residence in the European Union. You can only select a fully qualified legal professional solicitor, barrister or a specialist in IP law for example.
Consider the risks
There are a number of risks that come with brands, not registering their trademark. As a business owner, it’s advised that you register your trademark early on in the game so as to protect the brand identity. For example, Acacia Law explains the below dangers of leaving your mark untraded.
• Even if you have your name registered as a business name and a company name, you risk infringing another trader’s trademark.
• If someone registers your business or product name as a trade mark before you do, even if you have stronger rights to that name, it could cost you more than $100 000 to retrieve that name.
One example of this happening is the original Burger King franchise. When it opened its first restaurant in Illinois, they didn’t register a trademark right away. Because of this, a second branch was able to open a restaurant close by under the name and brand identity, and registered their trademark, creating the fast food franchise we know and love today. As the first branch did not secure their brand with a trademark, it is now only allowed to expand and open branches within a 20-mile radius, whereas the second branch, with its mark, has been able to expand worldwide.
It’s incredible important to protect your brand against theft, as it is only valid under the trademark law.