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Trademark Registrations - A Guide for Brand Owners

For brand owners, trademarks are often their most valuable asset. That’s why careful attention should be paid to the way the trademark is registered and how the trademark can be protected throughout its life. Read this guide and get back to us for any support on your brand identity.

Trademark registrations are often flouted as a simple process that require just an idea, an online application form, and a few hundred pounds. This might be the case for some businesses. However, for brand owners, protecting your identity is vital to overcome your competitors and ringfence that appeal to your consumers in a high-growth market. As such, you probably understand there is much more involved in registering and maintaining trademarks.

Read through this guide written by our lawyers for an in-depth view of trademark registrations and get in touch with any questions.

Contents

This guide will cover the following: -

Why are trademarks important for your brand?
When should I register?
Why trademark registrations are not as simple as you think
What is the process of registering a trademark?
What can I register?
Do I have to do anything after registration?
Other helpful information

Why are trademarks important for you brand?

Here is a simple and shortened cascading logic to demonstrate the importance of trademarks: -

A trademark is registered for your brand name and/or product > no one else can use it > consumers know said brand and/or product originates from you > consumers know there is a certain expectation of quality or experience when they see your brand or come across your product > your brand’s recognition and goodwill increases > more opportunity to generate sales arise.

As such, trademarks are a vital way to legally protect a brand.

Why should I register?

If you do not register your trademark, you may have to rely on non-statutory rights (e.g. the law of passing off) to protect your brand. Generally, it is more difficult to protect your brand under this method as it requires stronger evidence.

Conversely, where you register a trademark, you are automatically presumed to have UK-wide protection for your brand and the burden proof to evidence this is lower (in fact, no proof is required for the first five years after registration). Enforcement and protection is much more streamlined when your trademark exists on the UK Intellectual Property Office (UK IPO) register. You will also benefit from the UK IPO’s opposition mechanism that protects your trademark from third parties who wish to register trademarks which conflict with your brand.

Registering a trademark also makes your brand into a property right which can be licensed, transferred, professionally valued, and even mortgaged. This may be beneficial for matters such as merchandising and commercial investment.

Why trademark registrations are not as simple as you think

As mentioned above, though some believe the process is simple, there is much more involved. To understand the process, one need not think of it has a simple box-ticking exercise but rather as a strategic business exercise.

Thus, we believe having two key matters in mind will be helpful if you are thinking of registering a trademark for your brand. Those two matters are (i) risk mitigation and (ii) managing expectations. Under those matters, there are several questions to tackle in order to think strategically about your brand.

We outline below the relevant risks and mitigations associated with trademark registrations, as well as the usual assumptions brand owners have that need to be managed when trying to register a trademark.

Risk 1: you might not be able to register your trademark

Even if you have used the trademark (unregistered) for years, you may not be able to register it. This is because trademarks cannot be registered if they are too descriptive or lack distinctiveness.

This is more prominent with consumer brands, especially in the luxury and beauty industries, where brands are named after a personal name or geographical location.

However, there are certain rules which may allow such trademarks to be registered but this might require more evidence or altering the application to avoid rejection. A solicitor can help with pushing through such applications.

Risk 2: your trademark application might be challenged

Your trademark application might be opposed or, even worse, an infringement claim from a third party demanding that you pay damages. This is because your trademark might be identical or similar to a pre-existing right owned by a third party who may wish to secure their own interests.

Conducting clearance searches before submitting an application is recommended, therefore. Solicitors can be used for their expertise and professional judgement here.

Risk 3: you may not own your trademark

The thing you wish to protect under a trademark may not even be your asset in the first place. This is because you may have deficient contractual terms in place with contractors who may have designed the trademark that you wish to register. You may also have created your trademark using a third-party tool.

Investigating your historic contractual structures, advice on ownership laws, and retroactive corrections are something a solicitor can assist with to ensure you own what you want to protect.

Risk 4: you might face copycats

You will probably face copycats during the life of your trademark and this may tarnish or dilute your brand. This is because third parties may commit acts that imitate your brand, even if done unintentionally, which may lead to consumers falsely attributing what you are recognised for to other traders.

Having a solicitor manage your trademark portfolio is recommended since ‘watch services’ can be provided together with legal representation when conflicts arise.

Risk 5: your registration can still be challenged in the long term

Your registration can still be challenged years, even decades, into registration, whether on legal grounds or public opinion. This is because anyone can challenge your trademark via ‘invalidation’ or ‘revocation’ claims. Further, public opinion may force a trader to relinquish a registration to avoid reputational harm.

Regular audits of your trademarks should be done to assess the possibility of challenge and take action to mitigate the same. A solicitor can undertake such audits.

False assumption 1: investing into branding can be done right away

Investing into branding, advertisements, marketing campaigns (etc) might be tempting once you have come up with an idea. However, it is recommended to invest in such matters only where there is a high prospect of success of registering the trademark for the same to avoid wasting resources. To be ultra safe, it might be better to wait until you have receipt of the trademark registration certificate.

False assumption 2: pursuing that business venture can be done right away

Similar to the above, it might be tempting to pursue a particular business venture which rests upon a particular brand element. However, it is recommended not to plunge into a business venture until a registered trademark is in place for that particular brand element, in order to avoid breaching any contractual or other obligation.

False assumption 3: a trademark registration means you are in the clear

Though the official registration certificate from the UK IPO carries significant weight, you are not always in the clear.

This is because: -

Clearance searches are not guaranteed and, though unlikely after comprehensive due diligence, holders of pre-existing rights may still challenge your registration.
Your trademark can still be challenged in the future (see ‘Do I have to do anything after registration?’ below).
Resources will need to be invested into maintaining your portfolio for its lifetime, such as identifying and stopping copycats (see ‘Do I have to do anything after registration?’ below).
Fundamental changes in trademark law may happen over time and this may mean reconsidering registrations, portfolios, and brand strategy.

What is the process of registering a trademark?

When an idea is penned (hopefully internally only), then the general process is: -

Conduct manual searches. This usually starts off with a simple desktop search via search engines, social media, business directories and so forth. This step is free and can be done by anyone. The great benefit of this step is it can weed out at virtually no cost ideas which have already been taken up, thus allowing more resources to be spent on more protectable ideas.
Use official search sources. The next step is to use official sources such as the UK Intellectual Property Office (UK IPO) and TMView. This will be very useful where you intend to register a word-only trademark. However, you may find it difficult to conduct comprehensive searches for non-word trademarks. A solicitor can help here due to their experience with searching techniques. Further, you will not be able to search for unregistered rights. The significance of this is that owners of unregistered rights can still stifle your registration and even launch suits against you where your trademark conflicts with their rights.
Use specialist services. Solicitors can be used to conduct clearance searches using specialist software, as well as providing professional judgement on the likelihood of success of registration. The benefit of this is that pre-existing trademarks that are non-word (e.g. logos, pictures, shapes) can be searched. Furthermore, such searches will also find pre-existing rights that are not registered and so are hard or impossible to find using ordinary methods. A solicitor can use their professional judgement to assess the risks of registration based upon the results of such searches and provide you with strategic advice.
Draft the application. This includes drafting the specification of goods and services under which your trademark intends to be recognised and therefore protected for, as well as choosing the appropriate classifications for the same. It is advisable to procure a solicitor to work with you on this because (i) poor or broad drafting can be picked up by a UK IPO examiner and potentially be fatal to an application, (ii) the specification can be used by third parties to challenge the validity of your registration so drafting it properly reduces this risk, (iii) a properly drafted specification can increase the strength of the monopoly granted by the trademark in question, and (iv) a properly drafted specification may put through a trademark which may otherwise not have been registrable.
Examination. A UK IPO examiner will assess your application on whether it meets the rules under the Trade Marks Act 1994. Examiners can reject applications mostly on ‘absolute grounds’. This can be, for example, that the trademark lacks distinctiveness or is too descriptive of what it tries to protect (lawyers may also throw around monikers such as the ‘Sieckmann’ or ‘Libertel’ criteria). The rationale is that the UK IPO does not want to grant unfair monopolies to businesses that stifle trade or register trademarks which cannot be interpreted as ‘badges of origin’.
Opposition. After examination, the application will be published for opposition purposes. This means that anyone can oppose your application for a period of 2 months (which can be extended on notice). Generally, such oppositions will be based on ‘relative grounds’ (i.e. it is identical or similar to a pre-existing right). At this stage, settlements with third parties for mutual co-existence are common, though contested or complex oppositions can be heard before a UK IPO tribunal. It is highly recommended that a solicitor represents you on oppositions, since the process is adversarial and heavily dependent on arguing points of law.
Registration. Following expiry of the opposition period, the trademark will be a bona fide registered trademark which can be used UK-wide. Note that for international trademarks the entire process may have to be done again for each country or region and the process might be different. You might also find that you may be able to register a trademark in the UK but not in another country (or vice versa) depending on laws and pre-existing rights in other countries.

What can I register?

A lot of things can be registered as a trademark, as long as, generally, it enables consumers to identify that your products originate from your brand. Some subject matters are more difficult to register than others.

Less difficult to register: words, logos, pictures, product packaging.

More or very difficult to register: shapes, holograms, motion, position marks, colours, audio or sound bites, slogans, smells.

Do I have to do anything after registration?

Since trademarks are a business asset, constant and careful management is required post-registration.

Here is a list of common matters which affect trademarks post-registration: -

Renewals. Trademarks can last indefinitely but are subject to renewals every ten years. You can either take responsibility for renewals yourself or get a renewals agent to do so.
Oppositions. Once your trademark is registered with the UK IPO, this, coupled with a ‘watching service’ (see below), allows you to be notified of third-party trademark applications which have the potential to conflict with your earlier registration. Depending on the nature of your trademark portfolio, you could have a very active oppositions operation. It is highly recommended that a solicitor represents you on oppositions, since the process is adversarial and heavily dependent on arguing points of law.
Monitoring and watch services. These services are offered by solicitors and will monitor your trademark portfolio for any third-party trademarks which conflict with your brand. As well as trademark applications, this will also monitor third party rights which are not registered with the UK IPO (e.g. domain names). Keeping on top of third-party conflicts is imperative so that your brand does not suffer from dilution, false attribution by consumers, loss of value, parasitism, copycats, genericide, and free-riding.
Invalidity proceedings. Anyone has the right to challenge your trademark during its life. Challenges can be based on revocation (i.e. that you are not using your mark for the goods and services listed in the specification) or absolute grounds (i.e. your trademark is too generic). The significance of this is that a third party can do this even where the opposition period has expired and your trademark is registered. However, generally, the longer your trademark is registered and has been in actual use, the harder it will be to challenge. A solicitor can help with defending or launching invalidity proceedings.
Expansion filings. If business needs change in the future and your trademark needs to cover more goods and services, an expansion filing can be completed. An expansion filing will be classed as a separate trademark with its own trademark designation number. A solicitor can assist with this, to ensure that the specification for the trademark sufficiently covers your present and future business needs.

Other helpful information

If you already have a registered trademark in place, we recommend you appoint a solicitor as your UK IPO representatives and procure specialist watch services so that third-party conflicts can be managed in order to prevent your brand from suffering from dilution, parasitism, free-riding, and genericide.

If you want support on anything to do with your trademarks, then do get in touch with us.

About the author

This guide was written in-house by our qualified lawyers whom you can contact here for further information and support on your business activities.