Here at The Warwickshire Review we know there are a lot of important topics to get your head around as a small business owner, and even the most exciting tasks such as choosing a business name, selecting branding colours, deciding on product ranges and highlighting what makes your company different can be overwhelming when you have to take into consideration the importance of intellectual property (IP) and the positive and negative effect it can have on your business.
So we teamed up with Warwickshire-based patent and trade mark attorney firm, Two IP, to break down the topic of trade marks. Their chartered trade mark attorney, Rachel Havard, has kindly put together this guide for small business owners in Warwickshire, outlining the essential ‘need to knows’ about trade marks, how to apply it to your business and when to seek professional help….
What is a trade mark?
“There is so much for any new business to put in place before launch, but of greatest importance is how you distinguish your business from your competitors and how customers will come to know you and give you repeat business. This is exactly where trade marks come in; trade marks can be a company or trading name, brand names for ranges of goods or services, stylised words or logos, slogans, or colour schemes, to name just some examples. A trade mark can be anything which distinguishes one person or company’s goods or services from those of their competitors. Let’s discuss in more detail below.
Why should I register a trade mark? and how?
New businesses will often begin with company name registration, but registration of a company name at Companies House does not guarantee your freedom to use that name to sell your goods or services. This is where registration of a name as a trade mark – at the UK Intellectual Property Office (UK IPO) – is important.
A UK trade mark registration gives its owner the exclusive right to use a name or trade mark in the form registered and for the goods and/or services covered by the registration in the UK. By the same token, if a third party has already registered an identical or similar name as a trade mark at the UK IPO, that could mean that use of the name yourself would infringe their trade mark registration and they could prevent you from using it. It is very important to check the UK Trade Mark Register before you commit to use of a particular name or trade mark(s). Trade mark attorneys like us can assist you with this, and with registering the trade mark for you, provided it is available.
Businesses we speak to often say they have conducted internet searches to see if anyone else is using the same or a similar name. Even if internet searches suggest that nobody is using it, that does not rule out the risk of infringing an existing trade mark registration. If a UK trade mark registration is secured, the owner of the registered trade mark has a grace period of 5 years to put the trade mark into use. Only when the trade mark has been on the Trade Mark Register for 5 years, would a 5-year period of non-use expose the trade mark registration to potential attack on grounds of non-use. As a result, even if you cannot see any third-party use of an identical or similar name to yours in the market place, you could find yourself infringing an existing trade mark registration and be required to stop use of your chosen name, even if the registered mark has yet to be used.
If you do find that a third party is using an identical or similar name to your proposed name or trade mark, a search of the Trade Mark Register could show that they have registered it. In the UK, it is also possible for a person or business to build up goodwill in a trade mark even if they have not registered it, and to accrue common law rights, known as “passing off” rights. These rights too could be utilised to prevent you from using and/or registering the name or trade mark yourself.
So where should I start?
Despite so many demands on budget for a new business, first starting out, we strongly recommend a search of the UK Trade Mark Register to ensure a third party does not already have a monopoly in your proposed name or something to which your proposed name would be confusingly similar. Ideally, this search would be coordinated by a trade mark attorney who is best placed to interpret the results, advise upon risks, and recommend solutions.
You should also familiarise yourself with your market of interest to establish whether third parties already use a name identical or very close to yours, even if they have not registered it. Otherwise, you might be deemed to pass off your goods/services as theirs, where seen as a misrepresentation by you which would damage or be likely to damage that other party’s goodwill. Trade mark attorneys can help here, too, and can arrange “common law” searches to detect trade marks in use.
If a name or trade mark does appear free for your use, and if it has not been registered by another for the same or similar goods or services, then you could preserve your freedom to use it by securing your own UK trade mark registration. This could be enforced against third party infringements and/or could deter third parties from opting for the same or a similar name in the first place.
At Two IP, our patent and trade mark attorneys are very experienced in all areas of intellectual property and its protection. We can help protect your inventions and innovation through the patent and design registration process; we advise upon availability of trade marks for use and registration; we secure registered protection for you at the UK IPO (and overseas too as needed); and we can advise upon enforcement and ongoing maintenance of your IP rights.”
To discuss your ideas for your new business name and branding, whether available for use and how best to keep it that way, you can email Two IP email@example.com or visit their website at www.two-ip.com
We would like to thank Rachel at Two IP for putting this guide together for us and hope it helps the small business owners of Warwickshire protect their IP!