Why Are Trade Marks Important

Trade marks are essential to all businesses for the following reasons: (1) they allow you to stop others from trading on your good name; (2) they help you ascertain whether others have already monopolised your name (to protect against claims in the future); and (3) they are commercial assets of your business and are one of the first things an investor or purchaser might look for when considering valuation.

What can be registered as a trade mark?

trade mark must be a unique identifier of your brand. In the vast majority of cases, this means that trade marks protect either specific words or logos. However, it’s also possible to safeguard straplines, product shapes, sounds, and colours in certain circumstances.

What cannot be registered as a trade mark?

  • Anything offensive
  • Anything purely descriptive of the goods or service it will relate to
  • Anything misleading
  • A common or non-distinctive phrase
  • Anything resembling state symbols like flags or hallmarks

If you’re satisfied that your mark meets the criteria for registration, the next step is to check if anything similar is already registered. Once we’re confident that your mark isn’t already taken, we can apply through the UK Intellectual Property Office (UKIPO). It is also recommended that you register your trade mark in any country where you’ll be doing business. We can do this on a per-country basis or through international registries.

To discuss the application process and for guidance on registering your trade mark in the UK or internationally, please get in touch using the form opposite. We will be happy to discuss your requirements during a free consultation

CLIENT TESTIMONIAL

“Briffa are highly professional and really deliver on what they promise. I used them for a Trademark application and everything from communication to the pricing was highly suitable… Briffa are a breath of fresh air and I will use them in the future and I am already recommending them to my friends and family.”

– Kenneth Emeka Okoroafor, Trade Mark Services Client

How can we help?

Our team has a wealth of experience dealing with the entire trade mark process, from preparing suitable applications to discovering (and coming up with creative solutions around) similar marks. By working with us, you could free up valuable time and resources to devote to your business.

We can help you:

  • Ensure your IP is eligible for registration
  • Advise whether it’s worth registering
  • Check for pre-existing trade marks that may conflict with your application
  • Figure out what to do if a similar mark already exists
  • Determine which countries or international governing bodies you should submit your application to
  • Assist you with the registration paperwork for the countries you wish to register in
  • Monitor the publication of your application for objections, facilitating negotiations and advising on the best way to proceed

Why Choose Briffa?

We have been providing trade mark registration services since 1995

We offer a free consultation to discuss your trade mark registration needs before any fixed fee quotes are given

We have offices in the UK, the Republic of Ireland and Malta

We offer an industry leading service with short turnaround times and business-focused advice

Frequently Asked Questions

How long does the registration process take?

A trade mark application goes through two stages before it is officially registered. The first is the examination stage where the UK Intellectual Property Office consider the suitability of your application. Within roughly 8 weeks we will receive their judgement in the form of an examination report. If accepted the application will be published in the On-line Trade Marks Journal for a period of 2 months to allow for objections. If there is an objection or notification of threatened opposition, this can be extended to 3 months, and the process will be longer if a formal opposition is filed.

In the EU: 5-6 months (again longer with objections)

In the EU this publication period is 3 months as opposed to the normal 2 in the UK. Oppositions are generally more likely in the EU, given the large number of marks already on the register and the earlier rights holders in 27 different countries.

For International Registrations via WIPO there is an additional stage of formal examination by the WIPO which has a time frame of 12-18 months before being approved.

What legal protection does registering provide?

Registering your trade mark provides your business with protection against infringement from third parties who may be seeking to exploit your hard earned reputation. The damage this could cause is clearly concerning, however registering your intellectual property as a trade mark allows for swift and effective action against anybody abusing your IP. A registered trade mark forms a protective legal barrier around your businesses IP assets and prevents others from imitating your business.

Registering trade marks is also a sign to potential investors that you have secured adequate protection for your business, reassuring them that their investment will be safe in your business.

Could someone object to my application?

Once your application has been approved by the UKIPO it is published in the On-line Trade Marks Journal for a period of two months. This is to allow time for others to object to your application if they determine that it may be infringing on their previously registered trade mark. There are several reasons why somebody might oppose your trade mark application.

A third party might not formally object to your application at first, instead filing a notice of threatened opposition. This extends the objection period by one month to three. A notice of threatened opposition allows for both partied to engage in communication and negotiate an agreement without resorting to costly legal action.

Case Study: Registering Trade Marks Abroad

One of our clients is a fast-growing fashion brand. They approached our team for help with resolving a trade mark registration issue in the US.

The client wanted to expand to the US market in advance of an upcoming investment round. However, their branding was already highly similar to a pre-existing trade mark in the US. Therefore, their trade mark application, and expansion plans, hit a stumbling block.

Such was the size of the issue that one law firm had advised it could not be overcome, and the client should consider a change of name.

But having already built up a huge brand following in the UK, this was not a viable option. They asked us to find a solution.

And so, whilst the client pushed on with their expansion plans, which resulted in an infringement claim, we looked for trade marks on the US register with a high level of similarity to the existing mark. We found a suitable mark, and purchased it on behalf of our client.

We were then able to use this mark as leverage in the infringement claim. Through a tense mediation process, we were able to resolve the claim out of court – something that may not have been possible without the purchase of the similar mark.

Meet Our Team

Meet some of our specialist trade mark registration lawyers who can assess your legal matters and advise on the best solution for you.

Book a free consultation with one of our specialist solicitors.

We’ll start with a no obligation chat where we’ll get to know you and understand your current challenges.

Book now

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