Protecting
what’s rightfully yours
London office: +44 (0)20 7253 1563
Tunbridge Wells office: +44 (0)1892 510600
Tunbridge Wells office: +44 (0)1892 510600
A Trade Mark is any sign which is capable of distinguishing goods or services of one
undertaking from those of other undertakings.
A Trade Mark may consist of a word or words (including personal names), designs and
logos, letters, numerals, colours, holograms, the shape of goods, packaging, smells and
sounds.
A Trade Mark is a property right and can be assigned, sold or licensed to other traders.
A Trade Mark is a powerful marketing tool, and can become a valuable property right for a
business.
It is therefore important that Trade Marks are protected.
FREQUENTLY ASKED QUESTIONS
Can I register my trade mark?
Yes, as long as it is sufficiently distinctive. This means it should not be directly descriptive of
the goods or services, nor laudatory or deceptive. It should also not conflict with identical
or similar third party marks.
We can advise you on Trade Mark availability and registrability. We can conduct searches
prior to use and registration to ascertain whether there are any conflicting third party rights
which would present a risk of infringement or a bar to registration.
Please contact us for further information and advice about Trade Mark searching.
Where can I get trade mark protection?
Trade Marks are generally national rights and can be registered in most countries
throughout the world. In addition to individual national registrations, there are two
multi-jurisdictional systems of registration:
1. Community Trade Mark (CTM)
This is a single registration covering all 27 European Union member states.
2. International Registration under Madrid Protocol
This offers advantages over filing individual national applications. An ”International”
Registration under the Madrid Protocol provides a bundle of national rights in the countries
where registration is granted. Countries which can be included must be members of the
Madrid Protocol, and there are presently over 75 members, including most European
countries, the United States, Australia, China, Singapore, Japan and Russia.
We can act on your behalf to file Trade Mark applications in the UK, the European Union
and in all other countries where registration is possible.
What does it cost to get a Trade Mark?
This will of course depend on where you choose to register it. We are happy to advise you
on a filing programme and provide estimates of the costs involved.
How long does it take to register a Trade Mark?
In the UK, if an application progresses smoothly, a standard application will take between
5 and 12 months. It is possible to obtain an expedited registration using the so-called
“fast track” process on payment of an additional official fee, although in practice the saving
in time can be as little as 2 weeks since applications are generally processed quickly by the
government body responsible for this.
In the European Union (CTM) the process takes between 10 and 18 months. Applications
can take longer if unexpected difficulties arise. In many other countries, the registration
procedure will take far longer.
How long does Trade Mark protection last?
In the UK and in most countries a registration will provide protection for 10 years from the
date of filing and will be indefinitely renewable for periods of 10 years.
Can I rely on my common law rights such as passing off?
You can rely on these rights but in order to succeed on a case for passing off you will need
to show that a third party was aware of your use of the trade mark and deliberately misled
customers. If you bring an action for infringement of a registered trade mark, there is no
need to show any knowledge of your activities by the defendant so that trade mark
infringement is much easier and cheaper to establish.
I have registered as a limited company. Can I stop other businesses using my company
name?
Registration of your company name will prevent anyone else from registering exactly the
same name, but it will not stop similar names being registered and it will give no automatic
right to prevent others from using similar names for their businesses and products. The
best way to do that is to register your name as a Trade Mark.
Will registration of my Trade Mark stop anyone from using my Trade Mark as a website
address or domain name?
You can stop people using your Trade Mark as a domain name or as part of a domain name
if it is likely to confuse your customers. You may also be able to stop them using your Trade
Mark as a search term with Internet search engines.
What can I do if someone else is using my Trade Mark?
If you are faced with third party use of your mark or a similar mark, we can advise you
regarding the possible courses of action available to you such as Trade Mark infringement
and passing off, or other actions outside the UK such as unfair competition.
Do I have to be careful how I use my Trade Mark?
Yes, it is important to use a Trade Mark correctly or it could end up becoming descriptive,
or even generic, in relation to your goods or services. You may choose to use the
abbreviation “TM” to denote your Trade Mark, or you can use the ® symbol if your mark
is registered. The ® symbol should not be used if your mark is not registered since this
is a criminal offence.
We are happy to advise you further regarding correct usage of your Trade Mark.
What is a Trade Mark Attorney?
A Trade Mark Attorney is the title given to a registered trade mark agent, and is someone
who is qualified and registered to practice as a trade mark agent. A Trade Mark Attorney
acts for and advises traders in the law relating to the protection of Trade Marks and Design
rights.
Must I use a Trade Mark Attorney to register my Trade Mark?
There is no legal requirement to use a registered Trade Mark Attorney to represent you
or advise you. However, there are advantages to doing so. Trade Mark Attorneys are
qualified by examination covering all aspects of Trade Mark law and practice. A skilled and
experienced Trade Mark Attorney will be able to advise you on all aspects relating to Trade
Marks, both in the UK and overseas and will assist you in obtaining the best possible
protection for your Trade Marks.
undertaking from those of other undertakings.
A Trade Mark may consist of a word or words (including personal names), designs and
logos, letters, numerals, colours, holograms, the shape of goods, packaging, smells and
sounds.
A Trade Mark is a property right and can be assigned, sold or licensed to other traders.
A Trade Mark is a powerful marketing tool, and can become a valuable property right for a
business.
It is therefore important that Trade Marks are protected.
FREQUENTLY ASKED QUESTIONS
Can I register my trade mark?
Yes, as long as it is sufficiently distinctive. This means it should not be directly descriptive of
the goods or services, nor laudatory or deceptive. It should also not conflict with identical
or similar third party marks.
We can advise you on Trade Mark availability and registrability. We can conduct searches
prior to use and registration to ascertain whether there are any conflicting third party rights
which would present a risk of infringement or a bar to registration.
Please contact us for further information and advice about Trade Mark searching.
Where can I get trade mark protection?
Trade Marks are generally national rights and can be registered in most countries
throughout the world. In addition to individual national registrations, there are two
multi-
This is a single registration covering all 27 European Union member states.
2. International Registration under Madrid Protocol
This offers advantages over filing individual national applications. An ”International”
Registration under the Madrid Protocol provides a bundle of national rights in the countries
where registration is granted. Countries which can be included must be members of the
Madrid Protocol, and there are presently over 75 members, including most European
countries, the United States, Australia, China, Singapore, Japan and Russia.
We can act on your behalf to file Trade Mark applications in the UK, the European Union
and in all other countries where registration is possible.
What does it cost to get a Trade Mark?
This will of course depend on where you choose to register it. We are happy to advise you
on a filing programme and provide estimates of the costs involved.
How long does it take to register a Trade Mark?
In the UK, if an application progresses smoothly, a standard application will take between
5 and 12 months. It is possible to obtain an expedited registration using the so-
“fast track” process on payment of an additional official fee, although in practice the saving
in time can be as little as 2 weeks since applications are generally processed quickly by the
government body responsible for this.
can take longer if unexpected difficulties arise. In many other countries, the registration
procedure will take far longer.
How long does Trade Mark protection last?
In the UK and in most countries a registration will provide protection for 10 years from the
date of filing and will be indefinitely renewable for periods of 10 years.
Can I rely on my common law rights such as passing off?
You can rely on these rights but in order to succeed on a case for passing off you will need
to show that a third party was aware of your use of the trade mark and deliberately misled
customers. If you bring an action for infringement of a registered trade mark, there is no
need to show any knowledge of your activities by the defendant so that trade mark
infringement is much easier and cheaper to establish.
I have registered as a limited company. Can I stop other businesses using my company
name?
Registration of your company name will prevent anyone else from registering exactly the
same name, but it will not stop similar names being registered and it will give no automatic
right to prevent others from using similar names for their businesses and products. The
best way to do that is to register your name as a Trade Mark.
Will registration of my Trade Mark stop anyone from using my Trade Mark as a website
address or domain name?
You can stop people using your Trade Mark as a domain name or as part of a domain name
if it is likely to confuse your customers. You may also be able to stop them using your Trade
Mark as a search term with Internet search engines.
What can I do if someone else is using my Trade Mark?
If you are faced with third party use of your mark or a similar mark, we can advise you
regarding the possible courses of action available to you such as Trade Mark infringement
and passing off, or other actions outside the UK such as unfair competition.
Do I have to be careful how I use my Trade Mark?
Yes, it is important to use a Trade Mark correctly or it could end up becoming descriptive,
or even generic, in relation to your goods or services. You may choose to use the
abbreviation “TM” to denote your Trade Mark, or you can use the ® symbol if your mark
is registered. The ® symbol should not be used if your mark is not registered since this
is a criminal offence.
We are happy to advise you further regarding correct usage of your Trade Mark.
What is a Trade Mark Attorney?
A Trade Mark Attorney is the title given to a registered trade mark agent, and is someone
who is qualified and registered to practice as a trade mark agent. A Trade Mark Attorney
acts for and advises traders in the law relating to the protection of Trade Marks and Design
rights.
Must I use a Trade Mark Attorney to register my Trade Mark?
There is no legal requirement to use a registered Trade Mark Attorney to represent you
or advise you. However, there are advantages to doing so. Trade Mark Attorneys are
qualified by examination covering all aspects of Trade Mark law and practice. A skilled and
experienced Trade Mark Attorney will be able to advise you on all aspects relating to Trade
Marks, both in the UK and overseas and will assist you in obtaining the best possible
protection for your Trade Marks.
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