WHY WOULD YOU NOT

So you have created a trade mark and it captures the essence of your product or service. It defines not only the provenance but the quality of your business and it is making great strides in defining your reputation within the market.

Is that trade mark yours? The best way to ensure the mark and its reputation remains yours is through a process of trade mark registration with the Intellectual Property Office.

Unlike other branches of intellectual property, such as copyright, protection is not an inherent right that springs up upon creation.

In the absence of registration, it is possible for the proprietor of the trade mark to bring a claim of passing off to stop the infringement.  Unlike the registered mark, which requires proof of infringement alone, a passing off action will require establishing the following:

i)             Goodwill /reputation in relation to the trade mark

ii)            Misrepresentation by the infringer leading to confusion and

iii)           Damage

In contrast, the trade mark, once registered provides the proprietor with an exclusive right to use the mark and it avoids both the risk and avoids the uncertainty in bringing a common law action of Passing Off.

The trade mark is presented to the trade mark office, ideally in graphic form and it is linked to a specific class or classes of goods and/or services: classes 1 to 35 are goods and classes 36 to 45 are services. The cost of an application through trademarkroom is £170 plus an additional £50 for each class listed on the application form. The maximum number of classes permitted in an application is six. 

Alternatively, the Right Start application through trademarkroom requires £200 for one class plus £50 per extra class and we refund £100 if you decide not to go ahead after seeing the examination report.

The key, prior to submitting the application, is to conduct a detailed search of existing trademarks to establish whether an identical or similar looking or sounding mark has been registered. The search will cross reference specific classes of goods and/or services.  

All application fees once submitted are non-refundable.

Once registered, the trade mark is protected for 10 years, with the chance to renew, without limit, thereafter. The only exception to renewal is if the trademark has over time lost its distinct character.

For information on registering a trade mark, call 0800 862 0370.