What is a Trademark?

According to the UK Government, in May 2018, there was a total of 554,914 registered trademarks in the UK, including the first trademark that was ever applied for, which was Bass & Co on 1 January 1876.

Since the start of registering trademarks, there have been 1,048,939 trademarks registered. In addition to this, there are other ways of registering trademarks that are still valid in the UK, for example, by registering an EU trademark.

What is a trademark?

A trademark is essentially a product or brand’s badge that distinguishes the brand from others on the market and is used to promote the business. Trademarks can take many different forms and include words, logos and slogans. They’re visible pretty much everywhere in the world.

Trademarks are designed by companies to be easily recognisable.

Let’s take some very well-known examples:

• McDonald’s. Across much of the world, we only have to travel a short distance to see the famous ‘golden arches’ that are synonymous with the fast-food brand.
• Google. It’s even become a verb. However, no matter how recognisable Google’s logo is, people often struggle to recall the colour order of each letter in the logo.
• Nike. The famous tick or check mark as it’s known in the US is instantly recognisable.
• Intel. Not just a famous logo, but a very familiar chime or sound too!

Once a trademark is established, the company’s reputation is attached to its badge, and once registered, only the company or its owner has the right to use it. A trademark is therefore a valuable business asset and came become a trust symbol for consumers.

What is a registered trademark?

A registered trademark simply means that the company’s identity and branding have been legally registered with the UK Government so that other companies and brands cannot use it or copy it. Trademarks can be registered within different ‘classes’, which are essentially categories for specific goods or services. For example, Swan is a registered trademark of a brand of matches, a rental car brand and an electrics company.

Registered trademarks are not permitted to be descriptive and cannot include a common surname, a name of a registered company, or a geographical name. Furthermore, they must not imply any royal patronage.

Registered trademarks must not infringe anyone else’s and so before registering, companies can search for free on a database that is linked directly to the Intellectual Property Office to ensure that they do not do this. Once a trademark is registered, the branding can then use the ® mark which is how it must be identified in some countries.

What is the difference between copyright and a trademark?

There are a few important differences between copyright and a trademark. As mentioned above, trademarks are used to help recognise a brand or service and can include words, sounds, logos and even colours and fonts. Copyright is for a piece of work that is usually longer and is designed to protect an author’s original work.

Copyright applies to:

• Dramatic, literary, artistic or musical works. This can include a business’s mission statement.
• Music and sound recordings.
• Films.
• Broadcasts.
• Layouts in published written, musical or dramatic works.

Copyright begins as soon as a work is produced and does not have to be registered to offer the creator protection under UK law, unlike a trademark that needs to be registered. Copyright also lasts for longer, usually between 50 and 70 years, depending on the type of work created, whereas trademarks must be re-registered every 10 years.

Does a trademark have to be registered?

Registering a trademark protects a brand, such as the name of a product or a service. When trademarks are registered, a company can then take legal action against those who use their branding or logo, for example, without permission. This includes those who produce counterfeit goods.

The trademark can also have the ® symbol next to it which serves to warn other companies from using it and shows that it has been registered. It also means that a business owner can license and sell their brand.

However, a trademark does not have to be registered. But, not doing so puts the brand and its uniqueness at risk of being copied or counterfeited. By simply registering a company name on Companies House or by setting up a domain name, a business has virtually no protection legally to prevent others from coining similar names or services/products.

Someone else could also take a business’s unregistered logo and branding and trademark it themselves to prevent the original business from using their own designs. There may be a way to fight this due to ‘unregistered rights’, but it will be time-consuming and costly to prove which business used it first. For new business owners, this can be tricky to navigate.

Also, if a company starts to use their logo without registering it, it could mean that they risk discovering later that it is an infringement of someone else’s trademark (inadvertently done or otherwise).

As a company grows, it is more likely that others will start to copy due to its success. By registering trademarks, this can be prevented. It’s a fairly simple process to register a trademark in the UK. You can register trademarks on the Government’s website.

Once a trademark is registered, the business can use the ® system to deter others from using any part of it. Until this point, a company can simply add a superscript TM (like this: ^TM) to show that they are claiming something as a trademark but that it is not yet registered. Above all, the strongest protection for a mark is to register it.

What kinds of trademarks can be registered?

Many kinds of trademarks can be registered via the Government’s website.

The following types of trademarks can be registered:

• Word(s).
• A logo.
• Shape.
• Pattern.
• Position.
• Colour(s).
• Sound(s).
• Multimedia.
• Holograms.
• Motion.

Each trademark must be unique so that it is not easily confused with one that is already registered. For example, a business would not be able to register a fast-food company called MacDonald’s as it would be too similar to McDonald’s. Likewise, a company could not register a new trainer brand as Radidas as it would be easily confused with Adidas.

Aside from what can be registered, certain rules specify what cannot be registered as a trademark.

These include:

• No offensive language, swear words or pornography.
• No descriptive words such as using ‘cotton’ to describe a textile company.
• No misleading words, such as ‘pure’ to describe products that may not be considered pure.
• It cannot be a common surname or place name such as Paris or Smith.
• No common phrases that are vague. The Government website gives the example here of ‘We lead the way’.
• No generic shapes. If your company sells strawberries, you cannot trade mark an image of a strawberry.
• No use of national flags that the company does not have permission to use.
• No official hallmarks or official emblems such as royal emblems.

How can a trademark be protected?

In the UK, trademarks can be registered via the Government’s website. Other countries have their own systems for registering trademarks and to ensure a trademark is properly protected, it is good practice to register it in separate countries. However, the EU also has a system for registering a trademark that covers all the member states without needing separate registrations.

Likewise, there is an international system that allows businesses to register a trademark in different countries with one application, though this does then need to be processed in each country too.

In the UK, it is the Intellectual Property Office (IPO) that handles all registrations of trademarks. After a trademark is approved and registered, the ® symbol can be used. Until it is registered, a business can use TM in superscript to show that it is being claimed as a trademark but is not yet registered, like this ^TM.

At present, registering a trademark will cost a minimum of £170. However, it usually costs much more than this if a business has multiple goods or services that they want to protect. A renewal for a trademark in one class is currently £200 with £50 for an extra class.

In total, there are 45 classes of goods and services. For example, Class 1 is chemicals for use in industry, science, photography, agriculture, horticulture etc. Class 12 is for vehicles, Class 15 for musical instruments and associated apparel, and Class 28 for toys, games and playthings.

How long does trademark protection last?

Trademarks are not everlasting, nor do they afford the same protection as copyright which starts immediately after something is created and usually lasts for 50-70 years. Trademarks must be re-registered every ten years. A trademark can be renewed six months on either side of its first registered date.

If a business hasn’t used its trademark in the last five years, it can also be revoked or cancelled. Therefore, a business needs to prove its use continuously and keep records such as sales records, packaging or invoices bearing the trademark.

In theory, they can last forever, but they can also be removed from the register. This happens when a business stops using its trademark and a third party requests its removal. Once this has been done, anyone is then free to re-register the trademark as their own.

Businesses can also report changes to their trademark at any time. This can be if there are personal changes, such as addresses or emails, if the owner wants to give up their rights, or if an agent or representative is appointed.

What rights does trademark registration provide?

By registering a trademark, a product or service is protected from being copied or used elsewhere. Sadly, the more well-known a brand or product becomes, the more likely it is to suffer from being copied by third parties. If there is an infringement, trademark laws are there to protect the original owners.

The Trade Marks Act 1994 altered how registered trademarks are viewed and increased the rights of those who have registered trademarks. In the UK, the Intellectual Property Enterprise Court helps to resolve trademark disputes.

If a business owner sees another person infringing or using their trademark, they can seek advice from a trademark solicitor who can negotiate a licence for use of the trademark or stop the infringement on the business owner’s behalf. Such cases are not often heard in court, but this is a possibility and is the ultimate sanction that is applicable if you own a trademark.

However, if someone has not yet registered their trademark they still have some rights against its use, although they are not as well protected as those who have registered. An owner of a non-registered trademark can still sue another trader who uses their mark and tries to ‘pass off’ the mark or products as their own, but this is more difficult.

Registering gives the advantage of having much stronger legal rights. An act for infringement is quicker, easier and much less expensive if a trademark is registered than any action for someone ‘passing off’ an unregistered trademark as their own.

Also, by registering a trademark in the UK, it establishes a good platform for additional applications in other countries. Lastly, having a registered trademark and using the ® symbol can act as a deterrent for those who wish to copy or use your mark illegally.

Final thoughts on, what is a trademark?

Trademarks are an important feature of what differentiates one brand and its products and services from another. Whilst registering a trademark comes at a cost, it is most definitely the sensible thing to do to protect the trademark from use by other companies.