Trademarks Information
What
is a trade mark?
A
trade mark is any sign which can distinguish the goods and
services of one trader from those of another. A sign includes,
for example, words, logos, pictures, or a combination of
these.
Basically,
a trade mark is a badge of origin, used so that customers
can recognise the product of a particular trader.
To
be accepted for registration your trade mark must be:
- distinctive
for the goods or services which you are applying to register
it for,
and
- not
deceptive, or contrary to law or morality,
and
- not
similar or identical to any earlier marks for the same
or similar goods or services.
Is
trade mark protection enough?
We
strongly recommend you register your company name as a limited
company to offer further protection, this is the only way
you can register a unique company name. You do not have
to trade using the limited company, you can simply keep
the limited company dormant for as little as £15 per
year.
Please
remember that registering a company name at Companies House
does not mean your intended trademark will automatically
be accepted.
Why
shouldn't my trade mark be descriptive?
You cannot use everyday words which say what your goods
or services are, as everybody dealing in them should be
able to use these words for their goods or services. Ideally
your trade mark should immediately remind people seeing
it that it is your trade mark and nobody else's, and hopefully
return to purchase your goods or services in the future.
Benefits
of trade mark protection
Large
sums of money are invested in devising trade marks to suit
a particular product or service and to appeal to a particular
market. More large sums go on promoting trade marks or brands
through advertising. Unauthorised use of a mark means the
rightful owner may lose business and goodwill.
If
your trade mark is not registered you may seek redress through
the courts under common law in a "passing off" action. For
this to succeed you must persuade the court, first that
the mark used by someone else is associated in the public
mind with your own product or service, and secondly that
the other person's goods have been mistaken for your own.
However,
if your mark is registered you may sue for infringement
under trade mark law. For this to succeed you have only
to show that someone else has used a mark which is the same
as (or similar to) your own registered mark on goods or
services which are the same as (or similar to) the goods
or services for which your mark is registered.
In
certain circumstances the deliberate use of your registered
mark on goods, by another person and without your knowledge,
may be classed as counterfeiting. This is a criminal offence,
and criminal proceedings may be initiated under trade marks
law by police and Trading Standards Officers.
If
you suspect passing off or infringement of your mark, we
recommend that you consult your local Trading Standards
Office or Trading
Standards Central, an official trading standards "one-stop
shop" for consumer protection information, and/or seek
appropriate professional legal help.
I
want to register a trademark, how can SFS help?
Unfortunately
SFS no longer provide Trademark registration. The process
is too time consuming and interferes with our normal company
formation service. We recommend that you contact a trademark
solicitor to assist you with your application. The following
are the steps involved in Trademark registration.
Stage 1 - Searches and Assessment
You
need to carry out a full search of your intended mark to
assess it if it can be registered; we strongly recommend
this stage is not missed as all Trademark fees are generally
non-refundable and a failed application can be an expensive
mistake to make.
The
results of these searches will assess the following -
•
How
many, and which, classes
the trademark should be registered in
•
Are
there any other conflicting trademarks already registered
or pending with (1) the Trade Marks Registry in the
UK; (2) The World Intellectual Property Organisation (WIPO)
that the proprietor wishes to extend to the UK; (3) The
Office for the Harmonisation of the Internal Market (OHIM)
for Community trade marks.
•
Is
the intended trademark distinctive enough? This is a
difficult area to assess, we will offer an opinion but
can not guarantee the final decision of the Trade Marks
Registry will agree.
Please note, the searches do not cover any unregistered
trade marks which could be protected by common law.
The
fee for this service varies but is typically £200-£300.
For marks covering many classes there may be an additional
fee to cover the time involved in assessing the mark. This
will be discussed and agreed before accepting your instructions
by your trademark attorney.
For
further details of the available classes please
follow this link.
Stage 2 - The actual trademark
application
Based
on the results of Stage 1 your solicitor will register the
trademark in the UK in all appropriate classes as agreed
with you. This process takes a minimum of seven months to
complete as the mark will be advertised in the Trademarks
Journal for a period of three months to allow for any objections
to be filed.
The
fee for trademark registration normally starts at approximatley
GBP600-800 plus vat and this includes registration in one
class only.
Each
additional class is charged at approximatley GBP100.
Other
points you should be aware of
If
the mark incurs any objections during the application process
you will be charged at an hourly rate, to be agreed with
you by the solicitor, in order to defend the application.
It is extremely unlikely this will occur if you have carried
out stage 1 searches in advance.
All
fees for trademarks are generally Non-refundable. It is
for this reason we strongly recommend you utilise the stage
1 search service we provide.
Return
to Company
Formation home page.
Any questions or to order now - Contact us
Company Formation - Company
Registration - Scottish
Company Formation - Limited
Company Formation - Company
Formation UK - Off the
Shelf Company - Registered
Office - Company Secretary
- Limited Liability Partnership
- Company Limited
by Guarantee - Company
Seal - Apostille -
Links
Apostille
Legalisation - Online Company Formation - Business Advice
