Top ten tips for trademarks

26/04/13

Do you know what a trademark is? Or what it can help you protect?

Find out with our top ten tips, written by British Library Reference Specialist, Philip Eagle.

Check nobody’s already using your brand.

Before you start using a brand name or logo, you need to check to make sure nobody else is already using it. If it’s too close to something that already exists for the same or a similar product or service, you could end up having to waste a lot of money rebranding, or even paying compensation. You can search for brand names or logos free at the Intellectual Property Office’s (IPO) web site.

You don’t have to register.

Just by using a name or logo, you have the right to sue anyone who copies you for “passing off”, which means deliberately trying to trick your customers into using them by mistake. But this also means that someone else could do the same to you if they used it first without registering, so don’t just check the Intellectual Property Office website, but look online and in trade magazines for unregistered names or logos.

… but it can save time and money.

If you want to sue someone who’s copying you and you haven’t registered your mark, you may have to spend a lot of time and money getting the evidence together to prove that you have a reputation and your competitor is tricking your customers.

You can register your mark in the UK with the IPO for as little as £170.

The price goes up the wider the range of products and services.

... but you might want to spend some money on professional help.

A qualified trade mark attorney can advise you on how to protect your brand and avoid pitfalls. You can find one on the website of the Institute of Trade Mark Attorneys.

You can’t register something that simply describes your product.

You aren’t allowed to register a word or phrase that your customers use in everyday language to say what you do, or a very simple picture of your product, because that would mean that your competitors wouldn’t be allowed to tell people what they were selling! This is true even if it’s a completely new product or service you invented.

A company name or web address on its own won’t protect you.

Registering your company name or web address simply means that nobody else can call their company that or use that exact address for their site. It doesn’t stop anyone using a similar brand name.

You can register in the whole European Union with one step.

If you register your name or logo with the Office for Harmonisation in the Internal Market (OHIM) it will be protected in the whole EU. But you can’t register if anyone anywhere in the EU has registered it already for the same product or service – check on the OHIM’s TMView website.

Once you’ve registered in Britain or Europe, you can go anywhere else in the world.

Once you have a British or EU trade mark, you can use a rule called the Madrid Protocol to register in most other countries in the world, and the British IPO or the OHIM will handle the bureaucracy for you, as long as you don’t get into a conflict with an existing mark.

But don’t register elsewhere too long before you enter the market.

In most countries, you have to be actually doing business, or about to be, to be allowed to register a trade mark, and some countries have very tough penalties if you don’t start doing business there within a couple of years.

For more information on intellectual property, have a look at our IP advice.

We also have workshops on intellectual property and the four main types. Have a look at our Workshops and Events calendar.