Trade mark tips for beginners

Intellectual property (IP) isn't only about patents and inventions. IP can also include your brand assets, such as company name, logo, product or service name or your business tagline. You can protect these assets by using trade marks.

Here are some key facts to help you understand how to register and protect your business’ trade marks.

1. What is a trade mark?
A trade mark is usually a word, a phrase, a symbol or a logo, or a combination of those, which can identify and distinguish the goods and services of one business from those of another. Less commonly, trade marks can also be shapes, sounds and colours. See examples in what is a trade mark.

2. Domain names and trade marking
You can incorporate your brand name in domain names, but domain names as such are not the same things as trade marks. Read about the relationship between trade mark and domain name.

3. Selecting a strong mark
To protect your brand, it is vitally important that you select or create a trade mark that is unique, meets the criteria for registration and can be protected under the law. There are no rules on what makes a successful trade mark, but we've put together some tips to help you - see selecting a strong mark.

4. Searching for prior trade marks
Before you choose what mark to use, you should carry out a clearance search to see if identical or similar marks already exist. You should search for previously registered trade marks, as well as any unregistered marks that may be in use. If you omit the clearance search, you are risking using a mark that someone else owns and infringing their rights. Find out how to search for trade marks.

5. Should you register a trade mark?
You don't have to register a trade mark to use it. However, without registration, you will not have exclusive rights to use, license and sell your mark. You may also be unable to prevent others from using your mark, or one similar to yours, for comparable goods and services. Put simply, if you don’t register your trade mark, someone else may. Read about the benefits of trade mark registration.

6. What does it mean when a trade mark is registered?
A registered trade mark gives you the legal right to exclusively use your mark on the particular goods and services for which you have registered it. This right is territorial. This means that it only extends to the country or the particular geographical area in which you have registered your mark. Find out how to register a trade mark.

7. Classes of goods and services
Trade marks do not cover you for all goods and services. Different companies may be able to register identical or similar marks if they relate to different goods and services. For example, Polo mark exists in confectionery trade as well as in the motor vehicle sector. Selecting the right classes when applying for registration is very important. If you incorrectly classify goods and services for your mark, its validity may later be called into question. See how to classify trade marks.

8. Applying for a registered trade mark
You can file your trade mark application online. To register a trade mark in the UK, you will have to apply to the UK Intellectual Property Office (IPO). See how to register a trade mark in the UK.

9. What happens after you apply for trade mark registration?
It typically takes around four to six months to register a trade mark in the UK. The registration process involves the IPO examining your application. If they don’t object to the application, they will publish it for a period of two months in the online trade marks journal. During this time, anyone can oppose it. If no one opposes your application, or when objections are resolved, the IPO will grant you trade mark registration.

10. How long are trade marks valid for?
Once you register your trade mark, it will be valid for ten years. Once that term is up, you can renew your trade mark indefinitely in ten years periods if you pay the renewal fees on time. Find out how to renew your trade mark registration.

11. Registering your trade mark abroad
If you export goods and services abroad, or plan to grow your business in international markets, you should think about registering a trade mark outside the UK.

12. Protecting your trade mark
If you haven’t registered your trade mark, you may be able to protect it in the UK under the common law of passing off. However, in most cases, registration of the mark is your first line of defence. Registration entitles you to display the ® symbol on your goods and services. It also gives you the right to sue for infringement if someone is using your registered mark – or one similar to it – without your authorisation. See more on protecting registered trade marks and defending trade marks against infringement.

If you are thinking of using or registering a trade mark for your business, you can contact Invest Northern Ireland's intellectual property advisers for advice and assistance. Alternatively, you can seek professional legal help - find trade mark attorneys in Northern Ireland.