Clients often ask us about the legislation surrounding intellectual property, in particular, trademarks. Although this is not an area we specialise in, we have conducted some research and compiled a short guide outlining the basics of trademark laws.
What is a Trademark Logo?
A trademark logo distinguishes your goods or services from those of your competitors and forms part of your ‘brand’ – a set of associations that a person makes with a product, service or organisation.
Think of ‘Coca-Cola’, arguably the best-known brand in the world. Immediately, the unmistakable red and white colours spring to mind, the shape of their bottles and the fact that it is ‘the real thing’. The phenomenon of Coca-Cola’s branding is best summed-up by the following quote from a Coca-Cola executive:
If Coca-Cola were to lose all of its production-related assets in a disaster, the company would survive… if all consumers were to have a sudden memory-lapse and forget everything related to Coca-Cola, the company would go bust.
Do you need to register your Trademark Logo?
It is interesting to note that you will not be breaking the law by using ™ on an unregistered trademark; however, it is an offence to use the ® symbol for a trademark that has not been registered.
If you choose against registering your trademark, you may be able to take action if someone uses it without permission by using the common law action of ‘passing it off’, although this can be very difficult and costly to prove.
Although it is not essential to register your Trademark Logo, registration gives you an exclusive intellectual property right. It is likely to put others off using it and makes it easier to take legal action against infringement. It also allows you to sell it, franchise it, or issue a license to allow others to use it.
Often, companies will decide to register their Trademark Logo after having traded for some time and spending money on advertising, stationary etc, only to find that somebody else is already using it. And then there’s the anguished reaction:
But we’ve spent all this money!
Search the IPO’s trademark database to check that it isn’t already in use here
Trademark Rules:
Trademarks will be unacceptable if they:
- Describe your goods or services eg: ‘Tasty Food’
- Are not distinctive eg: ‘The Cheese Company’
- Are three dimensional shapes, or if the shape is typical of the goods or services that you provide eg the shape of an egg for eggs
- Are specifically protected emblems eg: The Olympic rings
- Are offensive images or promote illegal goods
UK or International Trademark?
Trademarks registered by the UK Intellectual Property Office are only protected within the UK. If you wish to use your trademark overseas, you may wish to apply for a Community Trademark to protect it within the EU, or an International Trademark through the World Intellectual Property Organisation. Alternatively, you can apply directly to the Trademark Office in each individual country.
Should you use a solicitor or apply yourself?
You don’t necessarily need a solicitor to register your Trademark Logo. You can apply yourself on the IPO Website here
Before you apply, it is important to check the IPO’s guidance outlining which trademarks are acceptable, and to check that it has not already been registered.
It usually takes 4-6 months to become registered and the cost of a trademark application starts at £170.
