What is a trademark and how to register yours correctly
What are trademarks?
Trade marks identify your products and services so that customers may find the products and services they like and avoid those they didn’t enjoy. If consumers have had a good experience with a business, or have heard that a particular business provides effective service, they may want to buy from that business. They should be able to reliably do so, without the risk of finding an imposter instead. Trademarks serve this purpose as they are your business’ “badge of origin”.
Signs and other identifiers
The signs that are typically registered are words (that is, names or slogans), and logos. Packaging and design features of a brand, including graphic symbols, are also sometimes registered.
There are other identifiers that are less commonly registered, such as musical jingles, shapes, colors, and smells. A well-known trademark registration of a shape is the Coca-Cola bottle. This is no simple feat to achieve as a registration. However, now that Coca Cola have managed to secure a trademark for this bottle shape, they have exclusive rights over the iconic bottle for as long as they continue to use it.
A registered trademark secures rights over not just the same name, logo, tagline or other sign, but also over confusingly similar ones too. That’s because the aim behind them is to ensure that buyers can find the products or services they are looking for, and won’t be confused by competing products or services that are branded in a similar way. So, a registered trademark owner is able to challenge others who use similar branding.
For example, just recently we heard that Darryl McDaniels, a member of influential hip hop group Run-DMC, has filed a £40.7 million lawsuit against Amazon, Walmart and other stores for using the Run-DMC name and logo on clothing they sell. As McDaniel has the name and logo registered, and this makes it easier for him to enforce his rights and prevent competitors from benefiting from his trademark’s reputation. Similarly, McDonald’s was able to prevent the registration for foods or beverages, of trade marks combining the prefix ‘Mac’ or ‘Mc’ with the name of a food stuff or beverage.
Registering trademarks is therefore an essential step to retaining your brand’s distinctiveness, and securing the exclusive rights your business needs over elements of your brand identity.
How to register your trademark correctly
The starting point is to make sure you may legitimately lay claim to the name, tagline or logo you intend to use (or continue to use) and register.
The name of your product or service is the most important right to secure. Under trademark law names may be shared, which means you need to focus on choosing the business categories in which to register your mark. Trademarks are registered by reference to specific ‘classes’ or business categories. This means that if your desired name is already registered but for different business activities, you may still register it, and co-exist with another business who is using the same name for those different purposes.
For example, Automobile Association and American Airlines are both known as AA; similarly POLO is registered by three different businesses who use the name for a car, confectionery, and a line of clothing.
So, when you want to put your stake in the ground by claiming the rights to the elements of your identity, such as your name, logo, or strapline, you should be clear about how you’re going to develop your business. Then you can ensure you secure an adequate scope of protection in your trademark registration. Otherwise, someone else may have rights to use the same or a similar brand element in the business categories you later realise you need. An example may help here. Say you register your name to sell clothing, and then later decide to also sell cosmetics. If someone else is using a similar name to yours for cosmetics, you would infringe on their rights, meaning you’d need to find a different name for your cosmetics. So, don’t ever assume you may just go ahead and use your name for any business activity. First check whether you’ve registered the name for that business category – cosmetics, in this example, and if not, do a search and register in the new business category before embarking on the new use of your name.
Advantages of registering a trademark
The advantages of registering a trademark are significant. Registration considerably reduces the risk of others picking the same brand element for their new products or services because your registration is on the public trademark registers. People are expected to search these registers before choosing names or other brand elements. If you’re not on the register someone else may build rights over the same name or other brand element, and this can lead to messy disputes and unnecessary costs.
Another aspect of registering your trademark properly is to register in other countries in which you do business given that trademarks are territorial. This means your registration only protects you in the UK (or EU, if you’ve registered an EU mark).
A UK trademark registration covers the UK only while an EU trademark registration currently covers all 28 European Union countries in a single application, including the UK. However, once Brexit kicks in and we leave the EU, this will no longer be the case, and you should be considering your strategy carefully if you’re registering your mark now.
To protect your mark in other countries, it is possible to use your trademark registration in the UK or EU as the basis of wider applications in other countries, either under the Madrid Protocol or directly with an agent if your desired country isn’t party to the Madrid Protocol.
You don’t need to be a household name, or a huge multinational to aspire to be a brand in the sense of becoming a recognised provider of the products and service you sell. Your brand protection is important.
