What are the benefits of trade mark registration?
A trade mark registration can act as both a sword and a shield. This is because it can be used to i) deter third parties from applying to register or using the same or a similar trade mark and ii) prevent the use and/or registration of the same or a similar mark in relation to the same or similar goods or services (and, in certain circumstances, dissimilar goods or services). Whilst some rights can be accrued though use of a trade mark, generally speaking these can be very difficult and very expensive to enforce.
If you wish to licence your trade mark to a third party it is strongly recommended that you register your mark. Many licensees/franchisees will insist upon this in order to protect their own interests.
Only trade marks which are registered can use the ® symbol.
You may wish to selll your trade mark or your business at a later date or you may be involved in a transaction which requires a value to be attributed to your trade mark. The registration of a trade mark will make it far easier to establish its value, this making it far more attractive to third parties.
Registering your trade mark - key considerations
It is important to get it right from the outset. Applying for a trade mark may seem like a simple process, but get it wrong and you could run into problems further down the line which could result in you being unable to use or register your trade mark in the UK or overseas. This is why it is important to seek professional advice when choosing and seeking to protect a new trade mark.
What is your trade mark? This may seem like a simple enough question, but there are a number of important considerations:
i) The definition of what may be registered as a trade mark is far broader than you may think and includes smells, sounds, motion, holograms and multimedia marks; ii) do you have a word mark or a logo or a combination of the two; iii) if you have a logo, was it designed by a third party (for example a design agency)? If so, has the copyright in the logo been assigned back to you? iv) do you wish to apply for registered design protection in relation to your logo or are you out of time (there are time limitations involved when seeking registered design protection);
ii) Where do you require protection? Generally speaking, trade marks are obtained on a country-by-country basis although it is possible to obtain an European Union trade mark (covering the whole of the EU, note this does not include Norway and Switzerland). There is also an International Trade Mark system which allows for the filing of a single trade mark application extending to various countries including the UK, EU, Japan, the USA, Australia and China, There are certain limitations as to who can own an International Trade Mark and Rebecca would be pleased to advise you on this further;
iii) What are your goods (products) and services? Think about your future plans for your trade mark. This is an area commonly overlooked when filing trade mark applications. Are there areas, outside of the area you are currently operating in/propose operating in, where you may wish to use your name in the not too distant future. In most cases, it is is advisable to include such goods or services in your application (although there are some limitations to this - again Rebecca would be pleased to provide you with further advice on this point).