Should I trade mark my business name?

Building a well-known brand takes time, but the rewards are immeasurable. An instantly recognisable brand inspires consumer loyalty, gives a competitive edge and, ultimately, maximises profitability. Businesses spend vast amounts of time and money developing the right name and branding, so protecting them should be high on your priority list.

One of the easiest and most cost-effective ways to protect your business name and brand is through a registered trade mark. In this edition of Ask the Expert, our trade mark solicitors discuss the benefits and challenges associated with trade mark registration.

What is a trade mark?

Trade marks are a type of intellectual property. They are often referred to as a ‘badge of origin’ and are widely used by businesses to protect their name and branding. Well-known trade marks include the business names Starbucks, Pepsi and Nike.

Unlike other forms of intellectual property, such as copyright, which arise automatically in the UK, a trade mark must be registered. Applications are submitted to the UK Intellectual Property Office (UKIPO), which will check that the mark satisfies the registration criteria, before accepting or rejecting the mark for registration. 

In the UK, goods and services are broken down into 45 ‘classes’ for trade mark purposes, and your application must specify those relevant to your business. For example, class 25 covers clothing and headgear, so a clothing manufacturer will choose class 25 along with any others that might apply to its commercial operations – class 14 for jewellery, perhaps. Our trade mark solicitors can advise on trade mark classification and prepare the application accordingly.

Once you have registered your business name as a trade mark, you enjoy a monopoly over it in connection with your chosen goods or services. You can prevent third parties from using anything too similar in connection with the same or similar goods and services. This right extends beyond so-called ‘copycats’. It applies to businesses who select the name independently of you, and, often, even to those who were using it prior to your registration. 

A trade mark lasts for an initial period of ten years but can be renewed indefinitely.

Is it better to register a trade mark for a name or logo?

Many businesses use logos in combination with their brand names. You may wonder whether you need to register your logo as well as your name or instead of it? The answer to this question depends a lot on how you intend to use your branding in trade. For example, will you always use the logo in combination with the word(s) or will you be using the logo on its own at all? In general, a word mark gives the broadest protection, since a registered trade mark for a word in standard text permits the owner to use that word in any format. However, there are various scenarios in which you may decide to register your logo either on its own or in combination with the word(s):

• If you have designed a distinctive logo that you want to protect against others using it in their business. Registering your logo as a trade mark can give additional protection to any copyright that may arise in the design;
• If your word mark on its own is likely to receive an objection, perhaps for being too descriptive or not distinctive enough on its own. Adding a distinctive logo can help to overcome a refusal on these grounds provided the logo element is distinctive and consists of more than just basic stylization or non-distinctive shapes, colours, etc;
• If you will be using your logo frequently alongside or in combination with the word mark. You can either apply to register the logo device on its own or as a “combination mark”, incorporated into the wording.

There are no extra fees to register a logo mark in the UK. However, if you want to register your logo and the word mark separately, this would entail two separate applications being filed.

You can also file a “series” application which can include up to six separate marks in a single application. The marks must only differ in respect of non-distinctive aspects so this option can be used to file a logo mark in multiple colour variations, provided that the ratios of the different colours are the same in each variation.

Do I need to trade mark my business name?

There is no legal obligation to trade mark your business name. However, there are several significant benefits to doing so.

What are the benefits of registering your business name as a trade mark?

Legal protection

Registering your business name as a trade mark provides powerful legal protection. The right granted is a monopoly, so you will be the only entity entitled to trade under the name in your sector.

Registered trade mark owners can ask border patrol agencies to detain any infringing merchandise imported or exported from the UK. Further, many online marketplaces, social media platforms and search engines take swifter action against the alleged infringement of registered trade marks than other, less easily identifiable, intellectual property rights.

Avoid confusion in the marketplace

When you alone can use your business name, there is no confusion over whose goods or services a consumer is purchasing. You maintain your brand’s exclusivity and avoid any reputational damage caused by consumers receiving a substandard service from third parties.

Ensure consumers can easily identify your brand

In an increasingly crowded marketplace, an instantly recognisable, unique brand allows consumers to easily identify your goods or services and purchase accordingly.

Increase your business’s value

Often, the bulk of a business’s value is derived not from its tangible assets such as office buildings, but from those that are intangible, such as its brand. A strong trade mark portfolio can be amongst a business’s most valuable assets, dwarfing the cumulative value of all others.

Enforcement

If a third party seeks to register their business name as a trade mark, you can oppose the application on the basis that it is too similar to your registered trade mark. Further, competitors may be liable for infringement if they use your trade mark without permission. Whilst you may have other legal remedies, a registered trade mark is by far the strongest right, and the easiest to enforce.

Exploitation

Trade marks can be commercialised in the same way as tangible property – sold, licensed, assigned and even used as loan security. Some commercial activities, such as franchising, depend on a registered trade mark to implement.

International Expansion

In today’s global marketplace, many businesses trade in more than one country. An international trade mark portfolio plays a key role in facilitating global expansion. By protecting your business name as a trade mark in the countries you wish to expand into, you can ensure nobody else uses it before you have launched. In addition, you may be able to enter a target market by licensing your international marks to local enterprises.

When is trade mark registration not appropriate?

Cost

Cash is often in short supply at the outset of a new business venture, and you may not have the funds available to pay the registration costs or legal fees required to obtain trade mark protection. However, the financial consequences of not protecting your brand can far outweigh the relatively modest initial outlay. It is, therefore, advisable to obtain the relevant protection as soon as funds allow. You can reduce the cost by limiting the initial registrations to key aspects of your branding and building your portfolio as your business grows. Our intellectual property solicitors will advise on obtaining the maximum protection for the minimum expenditure.

You do not use the trade mark

Whilst it is advisable to register your name as a trade mark before you start trading, you should have a clear intention to use the mark in connection with your business. If you do not use your trade mark within five years of registration, it may be revoked and you will lose both the trade mark and the money spent on registering it.

You may attract unwanted attention from competitors

One potential drawback of registering a trade mark is the potential to attract the attention of competitors who might take issue with your branding, especially if it bears similarities to theirs. While trade mark registration offers protection, it can also inadvertently invite confrontation from competitors who perceive a similarity in branding as a threat to their own market position.

Your name does not qualify for registration

Anything capable of being depicted graphically can be registered as a trade mark, including business names and logos. However, a proposed mark must satisfy certain legal criteria to qualify for registration. Crucially, a trade mark must be distinctive, cannot be descriptive, and should distinguish the goods or services of the owner from those of others. So, for example, the mark ‘Sweet Cakes’ for a range of cakes is unlikely to be accepted.

Speak to our IP team before you begin the brand development process. Our specialist solicitors will consider the registration prospects of your proposed name and branding and advise on any modifications required to obtain trade mark protection. By working with IP professionals from the outset, you can avoid wasting time and money developing a brand that cannot be protected or exposing your business to allegations of trade mark infringement from existing rights owners.

Conclusion

Trade marks are an essential element of effective brand protection. For a relatively low cost, you obtain exclusivity over your business name and branding. A well-known brand with the appropriate trade mark protection attracts investors, enhances your bargaining power and facilitates lucrative income streams such as licencing. If you are considering legal protection for your business name, speak to us. Our trade mark solicitors have vast experience working with businesses to develop branding capable of trade protection, obtaining the relevant registrations and subsequently enforcing the trade marks against third parties using them without permission.