You have spent years building a name customers trust. Then a competitor launches with a logo uncomfortably like yours, or someone is sitting on the web address you wanted. Success makes you a target for people looking for a shortcut, and most owners only think about how to protect their brand once something has already gone wrong.
Your brand is more than a logo. It is a promise of an experience: the assurance a customer has about what they will get when they buy from you. Intellectual property law protects much of it, from your name and logo to your strapline and domain name, but only if you take the right steps.
1. Understand what a trade mark actually is
A trade mark is any sign that distinguishes your goods or services from someone else's. In practice that can be a word, name, symbol, strapline, domain name or the packaging itself. The legal definition is worth knowing:
Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.
UK legal definition of a trade mark
It stops others misusing your name or logo and saves customers from confusion. The first registry opened in 1875; today's rules sit in the Trade Marks Act 1994.
2. Check whether your name and logo can be trade marked
To be registered, a mark has to be capable of being represented graphically and capable of distinguishing your business from others. The second test catches many out, especially online businesses that picked a descriptive name for search engine optimisation. The less descriptive your brand, the easier it is to register. Domain names and straplines can qualify too: amazon.com and lastminute.com are registered trade marks, as is L'Oreal's "Because you're worth it!"
You are unlikely to succeed with a mark that:
- is a generic word or phrase common in your trade
- is already connected with another product or service in your industry
- simply describes your goods or services, or their quality
- is not distinctive, is offensive, deceptive or against the law
- is a three-dimensional shape or a specially protected emblem
Do not assume that registering at Companies House protects your name. It does not, and the Intellectual Property Office (IPO) will not accept a company name as a trade mark just because Companies House did. Names such as "Cheap Accountants" or "Dependable Decorator" would be refused. If your business could become regional, national or international, you should seriously consider registering.
3. Know what registration gives you
A registered trade mark gives you the exclusive right to use your mark for the goods and services it covers. You can then put the ® symbol next to it, warning others that you will challenge copying. Using ® on a mark that is not registered is an offence, so be careful.
- It deters people from using your mark without permission.
- It makes legal action against infringers much easier.
- It allows Trading Standards or the police to bring criminal charges against counterfeiters.
- It is an asset you can sell, or license to franchisees.
Without registration you can still use ™, which needs no approval, but unregistered rights are far harder and costlier to enforce.
4. Register your trade mark with the IPO
In the UK you apply to the IPO. As part of the application you choose one or more classes, from 45 in total: 34 for goods and 11 for services. Most software falls in Class 9, printed materials in Class 16, and many website operators register in Class 42.
Examiners then search existing marks. Your application is published in the Trade Marks Journal, starting a two-month window (extendable to three) in which others can oppose it; if similar marks exist, you can withdraw instead, and their owners are notified if you go ahead. A straightforward application takes about six months; an opposed one can take six months longer. Once granted, you must renew every ten years.
5. Handle trade mark infringement carefully
Infringement happens when someone uses the same or a similar mark, in the course of trade, for identical or similar goods or services. Where the goods are only similar, you must also show the public is likely to confuse the two businesses, which is harder to prove. Classes matter: Apple the computer maker and Apple the record label coexist because they serve different markets.
If you think someone is infringing, take legal advice before you contact them. An unfounded allegation can give the other party a claim against you for unjustified threats, and that could cost you dearly.
6. Plan for international trade mark protection
A UK registration protects you in the UK. If Europe matters to you, an EU-wide trade mark (once called the Community Trade Mark) covers member states in a single application, though it can take up to 18 months. Check the current position with the IPO, as UK and EU registrations are now separate.
Further afield, the Madrid Protocol lets you build on your home application to cover other signatory countries, including China, Japan, Russia and the US, usually more cheaply than applying country by country. The Paris Convention and WTO agreement also give you six months after your UK filing to apply abroad, back-dated to your UK date.
7. Know where passing off fits in
If you cannot register your mark, the law of passing off may still help. It protects against one business misrepresenting itself in a way that damages another's goodwill. To succeed you must show:
- you have established goodwill and reputation in the brand;
- someone is using the same or a similar brand;
- this may lead the public to think they are connected with you; and
- it causes actual damage to your business or goodwill.
Evidence of confusion is hard and expensive to gather, so registration is the better first line of defence.
8. Add registered design rights for your logo
Registering your logo as a design as well as a trade mark gives you an extra layer: you can stop others making, selling or using products that carry your design. To qualify, the design must be new and have individual character, meaning its overall impression differs from earlier designs. Offensive designs, protected flags or emblems, and ideas that are concepts rather than designs will be refused.
The IPO will suggest changes if your application falls short, and a clean one is usually protected within two months. Design rights last five years and can be renewed up to a maximum of 25.
9. Secure your domain names early
Your domain name often is your brand online. Register it through your web host, designer or a domain registration service, and buy the obvious variations and alternative endings while they are available.
Cybersquatters register names in bad faith to hold businesses to ransom. Marks and Spencer, BT, Sainsbury's, Virgin and Ladbrokes all found their names taken by One In A Million Limited. The courts ordered them handed over on grounds of passing off and trade mark infringement. For disputes you need not go to court: the World Intellectual Property Organization (WIPO) runs a dispute resolution service.
10. Keep protecting your brand once it is registered
Registration is not the end of the story. Make one person responsible for renewing every trade mark and domain name so none lapses. Ask them to produce brand guidelines setting out logo size, fonts, colours and when to use ® or ™. Consistent use also builds your unregistered rights.
Watch your contracts. If you let others use your name under a franchise, protect your rights in a proper licensing agreement. If an agency designs your branding, make sure all rights are transferred to you in writing. And because brand law differs from country to country, decide which markets matter most and protect yourself there.
Where to start
This week, list every element of your brand: business name, logo, strapline, domain names and any product names. Then run each through the free search on the IPO website to see whether anyone already holds something the same or similar.
At the same time, dig out the paperwork from whoever designed your logo and check that the rights were assigned to you in writing. That shows you quickly what to register first.