Trademarks – What & Why

The definition of a trademark is a sign that distinguishes the goods or services of one entity from those of another. The purpose is to allow consumers to identify the source of goods, and it effectively gives you a monopoly on the use of that mark in the fields in which it is registered. Recent changes mean that, as well as words and logos, it is possible for things such as colours and smells to potentially be capable of registration as a trade mark.

Trademarks have to be distinctive (the purpose is to distinguish products or services) and cannot be descriptive of the goods or services in respect of which they are registered.

Do I need to register a trademark?

You do not need to register a name or sign to be able to claim rights in it and seek to stop others using it, however, the process is easier if you register a trademark, and the protection that you get is wider. If you have not registered a trademark then you have to be able to show that you had a reputation and goodwill, in the name or sign in question, at the time that it is copied. It is also likely that such goodwill would be limited in geographical scope to the areas in which you do business.

If you have a registered trademark which is copied, you do not need to establish a reputation in the mark and you have protection in the whole of the territory in which it is registered. Currently UK businesses can get a UK trademark or the wider protection of an EU trademark which also covers the UK, though the continuing protection in the UK of an EU trademark is subject to any Brexit deal.  

Why should I register a trademark?

Registering a trademark is normally a relatively inexpensive process and is something that a business should consider as a matter of course when launching any sort of new name or logo (or when first starting out). You do not want to invest substantial sums of money in branding and marketing of a product or name, to then find that somebody else has rights in that name which will stop you using it, and require a costly rebrand.

As previously stated, a registered trademark is a stronger right than an unregistered trademark, making enforcement of that right through the Courts generally an easier and cheaper process. A registered trademark also provides you with other very useful enforcement options. They can be used to secure the removal of copy products from online sites such as Amazon and eBay, and also to secure the cancellation or transfer to you of domain names which incorporate the trademark. This has recently been demonstrated by Danish toy giant LEGO successfully securing the transfer to it of two domain names (including www.thelegostore.com) which feature its trademark. Further, a registered trademark can be used to stop the importation in to the UK of goods which infringe that trademark.

Lastly, trademarks are a form of property which is owned by you or your business. As with any other form of property you can exploit the value in your registered trademarks, whether through sale, license, or their use as security, to provide extra capital or revenue for your business.

Baines Wilson can assist with the registration, enforcement and commercial exploitation of trademarks. Please contact Adam Turley on 01228 552600 or at a.turley@baineswilson.co.uk for further information.