What does a trade mark protect?

Two of the most frequently asked questions we receive are:

1. What is a trade mark?
2. What does a trade mark protect?

Simply put, a trade mark is a sign which distinguishes the goods or services of one business from those of another. This article will explore what a trade mark protects in more detail. In particular, we’ll consider the following:

• What falls under trade mark protection, including:
  • The sign
  • The goods or services
  • Where it applies
  • Availability
• What a trade mark protects against

What falls under trade mark protection?

The sign

The most common signs registered as trade marks are brand names and logos. There are various other brand identifiers that can be protected too, such as slogans, colours, sounds, motions, and smells.

It is important to distinguish brand names protected by trade marks from:

1. A company’s name registered with the Companies House
2. Domain names

Registering the company’s name with the Companies House does not provide you with any trade mark rights. And neither does the registration of a domain name. This means that you will not be entitled to stop third parties from using the name in the course of trade. Therefore, it is crucial to register a trade mark with the Intellectual Property Office, in addition to acquiring the domain name and registering the company name.

The goods or services

When you apply to register a trade mark, you will need to choose the goods and services that you provide under this mark. There is an internationally accepted classification of goods and services comprising 45 classes in total. Each class comes at an additional cost, so it is important to consider carefully what goods or services are relevant to your business. You want to have broad enough protection to cover potential diversification in the future without racking up a huge registration cost.

Where it applies

Trade marks are territorial in nature, therefore you need to register a trade mark in each country where you would like to protect it. For most UK businesses, protecting your trade mark in the UK is a good starting point initially. Still, if you’re considering (or are already) expanding internationally then you’ll want to register your marks abroad too.

Availability

Before starting to use a brand name or applying to register it as a trade mark, it is important to conduct clearance searches to ensure the name (or even a confusingly similar name) is not already in use, or someone else has the registration. This will allow you to avoid problems in the future in the form of a cease and desist letter or opposition to your trade mark application, which could force you to re-brand and pay compensation to the trade mark owner.

What does a trade mark protect against?

Once you successfully register a trade mark with the Intellectual Property Office, you will get a monopoly right to use the mark in relation to the goods and services for which is it registered.

This means that you will be able to stop third parties from using your mark in specific circumstances. Namely, if another individual or company infringes your trade mark. There are several types of trade mark infringement, which include third party’s use in the course of trade of:

• An identical mark in relation to identical goods/services
• An identical mark in relation to similar goods/services where there is a likelihood of public confusion
• A similar mark in relation to identical or similar goods/services where there is a likelihood of public confusion
• An identical or similar mark where the trade mark has a reputation in the UK and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark

Apart from stopping infringement, there are other reasons why it is worth registering. For example, a trade mark is a valuable intellectual property right that has the potential to add value to your business. You can sell it (assigned), license it, or use it as security.

If you would like to register a trade mark, we have a team of expert lawyers on hand to assist with every aspect of your brand protection, so just get in touch to book a free consultation meeting.