Trade mark registration – who, what, where, why and when?

Trade marks are great aren’t they? All the big brands have them, so they must be important, and it must be particularly satisfying to put ® next to your carefully selected name.

But is that it? Is that why you should incur the costs of a trade mark application? Or is there a little bit more to it?

Well, to answer this question I would suggest that we look at “the five Ws” and hopefully, by the end of this article, you’ll be in a strong position to make your own mind up.

WHO should register a trade mark?

Trade marks should be registered by brand owners. These are typically companies (i.e. the corporate entity used to trade under the brand) but they can also be the person behind the brand, or its founder. Sometimes there’s an advantage to keeping the trade mark in the name of an individual as it gives a useful degree of separation if the company experiences financial difficulties. But, more usually, it’s better to keep the brand in the name of the company, particularly if the company has multiple shareholders or if you’re planning to sell the business in the future. It also means if any claims are issued by or against the brand owner, there will be a corporate entity to shoulder the burden.

WHAT should you register?

The most useful trade mark is a word mark (e.g. BRIFFA) however brands do also protect their logos (e.g. ), particularly if they’re concerned about the stylisation of their logo being copied under a different name.

In some circumstances it’s also possible to trade mark a business name or register sounds, shapes and colours but these typically require a significant amount of goodwill and reputation.

Essentially what you want to protect is your signifier, or signifiers, of origin, i.e. the thing that shows consumers who you are and differentiates you from your competitors.

WHERE should you register?

Unfortunately there’s no such thing as a single trade mark registration which covers the whole world and so you need to pick the countries which are most applicable to you and your trade. Most of our clients start with a UK registration but you can quickly build on this with an EU registration and further registrations in most major countries using an international registration system called the Madrid Protocol.

Your filing strategy should match your commerce and you should register a trade mark in the countries in which you sell or supply your goods/services (and, in the case of goods, the countries in which your goods are made).

WHY should you register a trade mark?

This is the biggie, why should you spend your hard-earned cash on a trade mark application? Well, the two most significant reasons are as follows:

A trade mark is a monopoly right which allows you to prevent others from using a particular sign in relation to particular goods and services. It’s the most powerful weapon in your brand protection arsenal and it’s public and easy to prove. Once registered, as long as you use the mark and continue to renew it, your monopoly can remain in place indefinitely and you call always use it to prevent those pesky infringers.

A trade mark is a tangible business asset. It’s not something which you think you might have (e.g. brand recognition or notoriety) it’s something which you definitely have. Once registered, trade marks can be bought, sold and licensed. They can be used to generate money for your business and they can show investors exactly what they get in return for their investment. In light of this, trade marks are invaluable assets which protect all of the time and effort spent on building, developing and promoting your brand.

WHEN is the best time to do it?

You’ve managed to get to the end of this article so why not now? Really the answer is the sooner the better. Obviously, you need to be sure that your chosen brand name or logo is definite (as you don’t want to it to be changed in a few months requiring a new application) but, given that a trade mark grants a monopoly right, you need to make sure that it’s your name on the certificate and not the name of someone before you.

So best to get started as soon as the name is confirmed. All you need to do is contact one of Briffa’s expert solicitors on info@briffa.com and get your application underway.