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Do I need to register my trade mark? How to protect your brand

30th March 2022 by Edwina Bones

Categories: What's New?
Tags: intellectual, IP, mark, property, registered, trade, trademark

As a business, you probably have insurance in place to protect your assets, locks on your premises and even security teams to help ensure nobody steals what is yours. But have you ever wondered, do I use a trade mark and if so, do I really need to register it or do anything in order to be able to protect it? If you use a company name, logo, tagline or other form of branding to identify the goods or services your business offers as yours, then it is likely you are using trade marks and Laceys recommends you take appropriate steps to register these where possible.

Just to be clear, names, logos, straplines (or a combination of these), colours and smells are all capable of being registered as a trade mark. A trade mark can become one of a business’s most important assets which can attract and retain customer loyalty, and create value and growth – just think about how much brands such as Google and Chanel are valued at!

What about unregistered trade mark rights?

Whilst unregistered trade mark rights exist in the UK under what is known as the law of passing-off, it normally takes years of trading before you generate a sufficient reputation under the trade mark in order to acquire unregistered trade mark rights. In other words, you need to make a name for yourself before you generate any unregistered rights to protect that name, if of course, someone else hasn’t already tried to copy it.

Under the law of passing off the burden is also on you to prove that the competitor has misrepresented his goods and services for yours and that you have suffered harm as a result. This can prove both time-consuming and expensive, meaning that a number of businesses fail to take action even if they have the right to prevent others from using their name. Whilst this is very unfortunate, it has been known to happen far too often and we do not want this to happen to you!

It is also important to remember that whilst unregistered trade mark rights are recognised in the UK (albeit they are harder to enforce for the reasons mentioned above), these rights only exist in the part of the UK you have generated your reputation in (so if you only operate in the South of England you are unlikely to be able to take action against someone who is operating in the North of England who is preventing you from expanding your business to the rest of the UK). These unregistered rights are also not recognised in other jurisdictions such as China and Japan.

All of the above means that unregistered rights can offer some protection where they apply, but fall short of the protection that a registered trade mark can offer.

Benefits of registering your trade mark

There are many benefits of registering your trade mark:

• it helps to protect your reputation and avoid consumers associating you with someone else’s inferior goods and services;
• it provides you the right to use the ® symbol to deter potential infringers;
• it often makes it easier and cheaper to take action if someone else uses your mark (or a similar one) in a way that impacts your business;
• if you intend to license your trade mark to a third party as part of your business strategies, it is important that you own your trade mark in order to license it out and the party licensing the mark may even ask that you register the mark first to know that the mark is protected;
• it provides greater control over how third parties use your trade mark;
• it enables you to expand your business into new territories or new areas of business without infringing other people’s trade marks;
• a well-maintained trade mark portfolio can prove to be a valuable asset which can increase the value of your business to potential purchasers;
• you can apply to register your mark before you even use it in the UK which can be helpful ahead of your business plans; and
• your registration will last as long as you continue to use your trade mark (provided you renew it every 10 years as well as carry out any maintenance required in certain territories).

You will not be surprised that we recommend that you register any trade mark that is valuable to you if you can. If this article has made you think yes, I should register my trade mark then Laceys are very happy to help you. It is important to remember that just because you want to register your trade mark does not provide you with an automatic right to do so as there are some registrable factors to be considered from the outset. Laceys can advise you on this and assist you through each step to include carrying out any clearance searches that you may require, more information about this is can be found in this previous blog. If you wish to make an application after receiving the results of our searches, Laceys will be happy to draft your specification and process your application to the relevant trade mark registry all the way through to registration (provided the process is smooth) so that your business can experience all the benefits of trade mark registration.

If you require any further information then please contact us at e.bones@laceyssolicitors.co.uk or on 01202 377800.