Registering a trade mark applicationA trade mark can be thought of as a company’s corporate fingerprint
What is a trade mark?
A trade mark can be thought of as a company’s corporate fingerprint. Often, it is a logo, or a name that legally belongs to the company it is registered to. Similar to a fingerprint, a trade mark is unique to its owner and differentiates the goods and services from those of other companies. A company receives its trade mark by registering its intellectual property (IP), the design or logo, with the United Kingdom Intellectual Property Office (UKIPO).
Why is it important?
Registering a trade mark adds a value to your product and services which can be distinguished from any other company. For instance, if we look at the example of Starbucks, coffee is the company’s most prominent product and yet, if we think about Starbucks it is the logo which distinguishes it from other coffee selling competitors. It is the logo which enables brand recognition and awareness that causes the company’s coffee to increase in monetary value. Furthermore, registering for a distinct protection of your company’s identity can increase brand awareness and be an attractive prospect for potential investors. This prevents competitors and members of the public from inheriting a company identity which is too similar or even identical and potentially generating profit from your company’s trade mark.
What happens in the registration process?
Once you have decided to pursue a trade mark application, it is then important to think about its scope as there are various regulatory bodies. Each one governs a geographical region and contains information on all the registered trade marks within their jurisdiction. It is most common to apply to the UKIPO as this ensures that the trade mark is protected throughout the UK. Registering with the EUIPO provides protection to your company’s trade mark throughout the EU and is virtually essential for companies that interact beyond the borders of the UK. This is also a valuable avenue for businesses to explore if they aspire to expand their services. If you wish to do so by applying to the EUIPO or the WorldIPO, it is important to consider the implications of the larger geographical scope. For this reason, it is most common to register with the UKIPO and be protected nationally.
Once you have submitted your application to the UKIPO, the design or image which you are attempting to trade mark will be compared, through an extensive database, to other registered trade marks within the UK. This is a thorough process of analysis and will take into consideration geographical location and the type of product and service when deciphering how similar it is to existing trade marks.
Reasons to be cautious
Whilst it is essential to protect your company’s value, registering a trade mark can be a complex and risky process. For instance, if your company is identifiable by a red circle and another company has already registered a red circle for their logo, you could be in breach and incur costs. Similarly, the registration process requires you to complete a classification form to categorise your company into one of the standard classes of goods and services. If your company does not qualify within the class which you apply for then your application may be rejected on this basis alone. Furthermore, an incorrectly filed application for a trade mark will cause more problems than it will solve. Therefore, it is vital to seek advice to ensure that your application is filed correctly in order to optimise its chances of success.
Corporate & Commercial Solicitor
Shaun works in the corporate and commercial department and is working towards obtaining his corporate finance certificate at Harvard University.