If you’ve read our introductory guide to intellectual property or you’re already familiar with the basics of trade marks, you’ll know that a trade mark protects IP such as brand names, slogans, and logos from being used by other businesses.
UK Trade mark protection can be put in place rapidly and very cost-effectively, from as little as £170 online – although we recommend a combination of DIY and expert advisory support for optimum results and to save time, possible aggravation and extra unnecessary costs later.
™ – This symbol stands for ‘trade mark’ and is used to show that a piece of intellectual property is considered a trade mark and, while it is not registered, it’s likely that an application for registration is in progress
® – This symbol stands for ‘registered trade mark’ and is used to show that a piece of intellectual property has successfully been published as registered in the trade marks journal
If you’ve applied for trade mark protection, or you’ve already received your registration, you don’t have to use either of these symbols. But they help to clearly evidence your seriousness about having this ownership right and preventing others from potentially unfairly free-riding on the goodwill, reputation and value that you’ve already created in the trade mark(s) concerned. Be careful when using the symbols, indicating that you have a registration in a different country may be a criminal offence.
Why is it so important to register a trade mark?
Although your business may be registered with Companies House, and even if you consider that your brand name, any trading slogan and/or logo and images are already widely associated with you, anyone can create a brand and sell products or services identical/very similar to yours, potentially without legal implications, if you don’t have registered trade mark protection.
This can cause customers to do business with the other brand (as they may assume you are the same company), and if the other brand’s values are very different from yours, it can damage your brand’s reputation, too.
The risk of a copycat incident may seem like a small risk at the start of a business and thus unworthy of the budget priority that other business aspirations or needs may claim. However, there are few assets more important at the start of a business’ journey, than its identity, profile and recognisability/discoverability. If someone else asserts these from under your feet and you are found to not have protected them, it’s not just your customers who may be confused or unimpressed:
• investors look for credible business founders who have acted responsibly in protecting their business assets and who have taken reasonable steps to ensure that the value created in them is fully owned and enforceable. They may be reluctant to invest in a business that looks as though it has been sloppily set up and run
• Google may be directing search results to the wrong business owner, impacting your discoverability and search page positioning for potential new customers and business partners
• If someone registers your trade mark ahead of you, you’ll be on the back foot and with a potentially costly fight on your hands to oppose their registration and assert your own rights. You may well end up having to compromise and/or to co-exist with your rival under a similar name at home or abroad– you might even discover that your rival can succeed in blocking you from using your own mark at home and/or abroad
• You could lose the chance to license the trade mark for financial gain to others, e.g. expand your business by means of a franchise arrangement
• As your business grows, your international expansion, export potential and rapid market recognition and growth may be impeded if you are unable to use your recognised brand name or other trade marks to identify yourself in these new markets. And that’s before you count the very undesirable cost involved in having to produce separate marketing material for other markets or undergo a complete rebrand across all markets.
Registration, by contrast, is a small initial expense that can help to avoid all of these events, especially since registration in one country can often provide a time-frame of priority registration rights and status in other countries who are signed up to the same IP conventions or trading agreements as the UK.
Can intellectual property ever be protected without a registered trade mark?
The law of ‘passing off’ can offer you some limited protection if a copycat rival causes damage to your business (loss of sales or damage to your good reputation, for example) after passing off your brand’s intellectual property as their own – essentially confusing your customers to think that the copycat is you.
However, taking action against a copycat infringer using the law of passing off isn’t as easy, reliable or cost effective as registering a trade mark and then taking enforcement action in reliance on that registered right.
Being eligible for this type of protection is far from assured and it is particularly challenging for startups and SMEs. This is because you’ll need to prove that:
1. your market reputation is already of a high enough level for the public to automatically assume the other copycat trader was you, and
2. the other trader’s deception to the public has caused you a loss of business (or other relevant damage, such as reputation loss) as a result.
What if someone copies your unregistered intellectual property?
We recommend getting a fast view from a legal expert. There are options, such as reporting the passing off to an internet registry company or looking into mediation (a way of settling disputes outside of court with the help of a third party). You could also try for a court order that stops, compensates for and/or destroys all infringements of your IP wherever possible. As this can be a complex, costly matter, it’s definitely recommended that you approach this with the help of a lawyer.
But first of all, however, you should explore whether it is still possible to apply for trade mark registration. If your copycat hasn’t applied first, then you can apply online in a matter of minutes and get priority status over the copycat. Notice of your application is published in the Trade Marks Journal for a period of 2 months and the trade mark examiner may even notify your copycat of your application as part of the registration process. If/when your copycat opposes your application, you should be prepared to prove your prior usage of the trade mark, including the brand recognition and value attributed to it by your customers.
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