Trade mark protection distinguishes a business’s goods or services from those of other businesses. It can cover names, logos, slogans, shapes, colours and other signs, provided they meet the legal requirements for registration. Harper James is a UK full-service commercial law firm advising start-ups, scale-ups and established companies on the laws of England and Wales, including intellectual property and trade marks.
A registered trade mark gives its proprietor exclusive rights in the registered mark for specified goods and services in the relevant territory. Protection is not automatically unrestricted. It depends on the mark, the classes selected and the territory covered. Registration also does not normally prevent every use of a similar name, particularly where the goods or services and the likelihood of confusion are different.
Growing organisations should consider trade mark protection before committing significant funds to a brand. A preliminary search can identify identical or similar marks, while a fuller clearance review assesses the risk of objections, infringement allegations and an opposition to a proposed application. The organisation should also decide which legal entity will own the mark, particularly where founders, subsidiaries or investors are involved.
An application to the UK Intellectual Property Office (UKIPO) identifies the mark and the goods or services for which protection is sought. The UKIPO examines the application and publishes an acceptable application for opposition. If registration proceeds, the registration generally lasts for 10 years and can be renewed for further 10-year periods. Applications should use classes that reflect the organisation’s current activities and reasonably planned expansion, without treating registration as protection for every possible business activity.
Trade mark ownership records should be kept up to date, including assignments, licences and changes to the owning company. Organisations should use the mark consistently and retain evidence showing its commercial use. A monitoring process can identify potentially conflicting applications, domain names, marketplace listings and business names. The appropriate response may range from correspondence and coexistence terms to a formal opposition or infringement proceedings.
Unregistered branding can receive some protection through the common-law action of passing off, but this generally requires evidence of goodwill, misrepresentation and damage. Registered rights provide a clearer basis for enforcement, although they do not remove the need to assess evidence, cost and commercial objectives before taking action.
A UK registration protects the mark in the United Kingdom, not automatically in other countries. Organisations expanding overseas should assess protection in each target market before launching there. International applications may be available through systems such as the Madrid System, but the resulting protection remains subject to the laws and examination processes of the designated countries. A trade mark portfolio should therefore be reviewed when new products, trading names, territories or corporate structures are introduced.