This article was last updated 0 months ago and may not represent current law.
If you've invested time and money in to developing a brand, then your business will usually want to ensure that no one else can copy the branding.
You can protect the business by seeking Trade Mark Registration in the UK.
Trade Marks in the UK are registered with the Intellectual Property Office (IPO) but in order to become registered, the logo (or word/slogan etc) needs to meet certain requirements set down by the Trade Mark Act 1994.
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What is a trade mark?
You'll often see the words "trade mark" (or trademark) and "brand" used interchangeably; brand and branding is used by cooler marketing types whereas trade mark is used by lawyers like me!
Both refer to the device used by a business to differentiate their goods from other companies. Sometimes we call them "signs" - and they can be either a logo, stylised words, or just the words themselves.
The word "brand" literally comes from the time when herdsmen would brand or mark his animals to distinguish them from he neighbours - now we brand products to show this originates from company x.
Successful brands are often simple - an Apple for instance - but a brand may also a name, a label, a slogan, a jingle or simply the distinctive packaging or "get-up" of a product. Brands often communicate information about the product or service. A brand provides the consumer not only with reassurance about the origin of the product but also about other features such as quality, luxury or economy.
What type of trade marks are possible?
A mark may consist of:
- Words (for example, KODAK for cameras or JAGUAR for cars).
- Slogans (for example, JUST DO IT for Nike sportswear).
- Designs (for example, a harp for Guinness stout).
- Letters (for example, RBS in respect of banking services).
- Numerals (for example, 501 jeans).
- Internet domain names (for example, amazon.com).
- The shape of goods or their packaging (for example, the shape of a Coca Cola bottle, registration of which was denied by the House of Lords under the 1938 Act, or the triangular shape of Toblerone chocolate).
- Smells (for example, Sumitomo Rubber Industries' registration of a floral fragrance reminiscent of roses as applied to tyres).
- Sounds (for example, the Intel four-note musical jingle).
- Colours (for example, Heinz's registration of the colour turquoise for use on tins of baked beans).
- Gestures (for example, Asda has registered a double-tap on a jeans or skirt back pocket as a trade mark).
- Moving digital images (for example, the Intel "leap ahead" animated logo).
Any sign which can be represented on the register clearly and precisely is potentially registerable as a trade mark. (It used to have to be represented graphically, but that requirement went in January 2019.)
Why register a trade mark?
Registration of trade marks allows the brand owner to protect itself against competition.
Without registration, one must rely upon common law of passing off, which are more difficult, more expensive and time-consuming to run.
Upon registration, the owner gets a statutory right to the exclusive use of the trademark in connection with the goods or services it is registered in (called classes).
Registration of a trademark gives the owner the right to sue for trade mark infringement if any person uses:
- an identical sign for identical goods
- an identical sign for similar goods
- a similar sign for identical goods
- and in some cases, a similar sign for similar goods.
So can we just register anything as a trademark? Our logo is just a simple image with standard font text on?
In order to be registerable as a trade mark, the mark must be:
- distinctive - that is capable of distinguishing itself from other brands
- able to be represented clearly and precisely on the register,
- can be a 3d shape as long as it is not the function of the object or a container
- cannot be merely descriptive
- cannot be deceptive (e.g calling something Gold if it is made of aluminum)
- cannot be a common surname or geographical name
- cannot be a national flag
- must not be similar to an earlier registered trademark
There is a risk, then, that if you seek to register a very simple logo with a icon and name, that it might not be registerable as it would not be distinctive.
Can we trademark a logo which is just a stylised font? What if we use a standard font, like, Roboto or Calibri ?
Yes, you can trademark a logo which is just the company name or product name as a stylised mark - providing it meets the requirements above.
If your brand was created on Canva or Adobe Spark, for example, then there would be questions over whether it was distinctive enough.
Similarly, if it was just an icon with the name next to it, then again it may not be distinctive enough.
In terms of font usage, you (or your designer) should ensure that the font licence allows you freely to use the font commercially. Roboto, mentioned above, for instance, is licenced under the Apache 2.0 commercial licence and therefore allows commercial use.
As with anything, if you're in any doubt, speak to a trademark lawyer like me.
How do you register a trade mark?
You have two options: you can do it yourself through the IPO or you can get me to do it. My fee for trade mark registration is £750 plus VAT plus the IPO's fees, per mark, for one class. The IPO's own fee for an online application is currently £205 for one class and £60 for each additional class.
Doing it yourself through the IPO is potentially risky because if you make a mistake then you cannot edit the trade mark once it has been submitted.
An application to the UK Intellectual Property Office (IPO) needs to be made. They the "examine" the application to ensure it meets the statutory requirements mentioned above. If they consider it does, then they will publish the trademark for a period of opposition to allow other trademark owners to contest the registeration. After the opposition period, if unopposed, the trademark will finally be registered and a registration certificate provided.
When registering a trade mark, you need to specify what goods and/or services the trademark will be used for. There are 45 different classes of goods and services and it is important to get this all right. Each class has hundreds of sub-classes. For example, you might be a business coach who also sells books and teaches online, and therefore that could be three different classes.
You probably will not be able to register in all 45 classes even if you wanted to. You'd need to demonstrate a real intention to trade goods/services in each class and moreover, if a trademark is not used over a five year period, then the registration could be revoked for non-use.
Can I register my brand Europe wide or Worldwide?
Yes you can.
European Trademarks are dealt with by EUIPO - European Union Intellectual Property Office and there is a neat way of applying for an EU trade mark (EUTM) to provide coverage in the European Union. An EU trade mark hasn't been protected in the UK since 1 January 2021, so it sits alongside a UK registration and doesn't replace it.
Seeking trade mark registration worldwide is expensive but can be done, and if you're a true global brand then you probably wont mind spending hundreds of thousands of pounds to get registered everywhere.
For most business, UK trademark registration is sufficient, and for some EU protection via an EU trade mark may be necessary.
How can I help you with trade marks?
I can advise on trade mark registration and on protecting your brand generally. I don't run disputes myself, so trademark infringement, passing off and other intellectual property disputes go to one of my Nexa colleagues (Abby Minns deals with contentious IP), who will quote their own fee.
Written by Steven Mather, a business solicitor acting on company sales and purchases. This is general information about the law, not legal advice on your situation. Law correct as at .
