Navigating trade mark law can be a minefield and there are strict rules about what can and cannot be registered. Trade marks can be registered as word marks, logo marks and/or a combination of both and this insight breaks down what you can register and how Tozers can help you.
What can you register?
· Your trading name, for example: “Tozers”.
· Your logo, for example, LinkedIn’s logo.
· Your stylised logo, for example: Netflix’s logo in the words “NETFLIX”.
· A combination of words and logos, for example, Coca-Cola’s logo.
· Your strapline, for example: Tesco’s trade mark in the words “EVERY LITTLE HELPS”.
· Your brands and products, for example:
· Apple’s trade mark in the words “ICLOUD”.
· Burger King’s trade mark in the words “WHOPPER”.
· Your domains
Registering your trading name and/or brands as a trade mark allows you to protect your domain and online activities. For example, registering “Tozers” for legal services protects you from infringers registering domains and offering the same/similar services.
· The shape of your product, for example:
· Your product packaging, for example:
· The Rice Krispies cereal box.
· Your fictional characters. You can register the characters’ names and their image. For example:
· The words “TINKY WINKY”.
· The image of Naughty Noo-Noo!
What will give me the best form of trade mark protection?
Having a diverse portfolio with a mix of word marks and logo marks will give you the best protection. Another excellent way to receive strong protection is to apply for your trade marks before you start trading or launching a new product/service.
What are the benefits of trade mark registration?
The key benefit is that registration is a low cost investment for strong protection which is renewable every 10 years. A trade mark can help you save the time and expense of relying on unregistered trade mark rights. For more information view this insight.
What are the benefits of using a lawyer for trade mark registration?
· Clearance searches. We undertake these to check for conflicts with registered trade marks. Conflicts may not be obvious if you are searching by yourself. Unlike some other firms, clearance searches are included in our fixed fee trade mark application service.
· Protecting your costs. Once you have submitted your application, the application fees are not refundable. If the IPO examiner decides that your application does not meet trade mark law criteria you will have lost money. We can take stock of your branding and advise what to register with the IPO.
· Registering strong words. The IPO will not automatically reject trade marks that do not meet trade mark law criteria unless there are obvious defects. Trying to enforce your intellectual property rights in a weak mark may leave you vulnerable and open to trade mark invalidation by a third party. Our expert team can advise on the hierarchy of trade marks and consider vulnerabilities in your branding.
· Ensuring your goods and services are protected. Once submitted, a trade mark cannot usually be amended so you will save on both IPO and legal fees if you obtain expert advice before submitting your trade mark. We can advise on appropriate classes of goods and complete and file an application with the IPO.
· Registering the right type of trade mark for you. For example, 40% of trade mark series (variations of a logo) are rejected by the IPO. Our specialist lawyers can advise you on trade mark strategy. We can advise you to ensure that your logo variations are protected and provide specialist advice about what is likely to meet the requirements of trade mark series.
· Dealing with registration proactively. You can launch a new brand before obtaining trade mark registrations but it can be costly/impossible to obtain the necessary rights afterwards if a third party has registered them. We can provide bespoke advice and agree on a timescale to draft the trade mark application before you commence your new venture.
How can Tozers help identify what trade marks to register?
Thoughtful registration of intellectual property lies at the heart of many a business success and we can advise about how to maximise the protection available to you.
Our fixed fee Branding MOT Service can help identify and protect your trade marks. Even if trade mark registration has been completely overlooked, there are different ways forward and we can provide specialist advice to get the application right and avoid conflicts, saving you time and money.
