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.

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