Guide

Trade marks: top tips for small business owners

Intellectual property (IP) isn't only about patents and inventions. IP can also include your brand assets, such as company name, logo and product or service tagline. Think Google, Coca-Cola and Nike's 'Just Do It'. These brand assets can and should be protected by trade marking.

Here are all the essentials you must consider when thinking about using or registering trade marks for your business.

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 of different types of trade marks 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 differences between domain names and trade marks and advantages of trade marking domain names.

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 is legally protectable. There are no rules on what makes a successful trade mark, but here's a selection of tips to help you with selecting a strong mark.

4. Searching for prior trade marks

Before you decide on your trade mark, you should carry out a due diligence search to see if marks identical or similar to yours are already in existence. The search should focus on previously registered trade marks, as well as any potential unregistered marks that may be in use. Without doing the search, you are risking using a mark that is owned by someone else, and you could be sued for infringement. 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 right 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 benefits of trade mark registration.

6. What is a registered trade mark?

A registered trade mark is a 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. A single mark can be registered by different companies if it relates to different goods and services. For example, Polo is a registered mark of two different businesses – one in confectionery trade and the other in motor vehicles. Selecting the right classes when applying for registration is very important. If goods and services are incorrectly classified, the validity of the registered mark may later be called into question. See how to classify trade marks.

8. Applying for a registered trade mark

The application for trade mark registration can be submitted online. Once you’ve chosen your mark and conducted a diligent trade mark search, you will need to define goods and services for which you wish to register your trade mark, decide which jurisdiction you wish to register your trade mark in, and pay a registration fee. To register a trade mark in the UK, you will have to apply to the UK Intellectual Property Office (IPO).

9. What happens after you apply for trade mark registration?

A UK trade mark registration usually takes around four to six months. When you apply, you will receive a confirmation of your filing receipt from the IPO. They will examine your application within one month of receiving it. If there are no objections to your application, it will be published in the online Trade Marks Journal for a period of two months. During this time, anyone can oppose it. See more on objecting to and challenging trade marks. 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 your goods and services, 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

Unregistered trade marks can be protected in the UK under the law of passing off. However, in most cases, registration of the mark is your first line of protection. 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. If you find someone infringing your mark, you should act as quickly as possible. Read about enforcing your trade mark 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.