Tailored IPO health check for my business idea
By using a name, words, colour, logo, or any other sign or symbol in the United Kingdom to distinguish any of your goods or services from those of others in your line of work, you’re using a UK trade mark – a potentially valuable intellectual property right. It may be protected automatically as a 'common law' trade mark, or you may be able to give it added protection by registering it with us at the Intellectual Property Office.
If you use a name, logo or other sign or symbol in the UK for a period of time, so that it has a good reputation, and has come to be associated with your business’s goods or services, it is what’s known as a ‘common law’ UK trade mark.
If you have rights in a common law trade mark, it means you can bring a 'passing off' court case in the UK against anyone else in your line of business who uses a trade mark that looks or sounds the same as, or similar to, the one you are using. The trade mark does not have to be registered for you to do this, but you have to prove your case in court. You will need to prove:
·That your trade mark has a good reputation (ie there is “goodwill” attached to it).
·That the trade mark is associated with your business.
·That you have suffered damage because of the other trader’s use of it.
These can be difficult to prove, which means passing-off cases can be time-consuming and expensive.
If the trade mark meets the criteria for registration with us at the Intellectual Property Office that will give you even quicker, more certain protection against infringers.
Many businesses apply to register a trade mark with us at the Intellectual Property Office. Read the Action Points below to find out whether your application is likely to succeed if you do, and what to do next if you decide you do want to apply to register your trade mark.
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Your trade mark may not be registrable with us at the Intellectual Property Office because it is made up of terms that are in common use in your industry. Double-check with the IPO Information Center, in case you are missing out on possible protection.
Sorry. This means that the trade mark may not be registrable with us at the Intellectual Property Office. It will also stop you registering it in most other countries in the world where those terms are customary.
If in any doubt, the IPO recommends that you double-check – call the IPO Information Center on 0300 300 2000 or email enquiries@ipo.gov.uk, or take advice from a specialist legal adviser.
If you find that your trade mark is not made up of terms that are customary in your industry after all, the IPO recommend that you go back and retake the trade marks IP Healthcheck.
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Consider whether to develop a new trade mark, that does not contain terms that are customary in your industry, or rely on the rights you get from an unregistered ('common law') trade mark.
Developing a new trade mark
If your existing trade mark has not yet developed a reputation in your marketplace, it may be worth abandoning it and developing a new trade mark for your goods and services that you can register. However, if it has, this isn't a decision to take lightly. You will lose any costs you have already invested in, for example, stationery, uniforms, vehicle livery, advertising, a website, etc using the old name and will have to spend to replace them with the new name. You could also lose much of the goodwill that has built up around your existing name in your marketplace, and you will have to invest in all the promotional and other costs necessary to build up goodwill in the new name. - although you can minimise these problems by picking a new name that , while being distinctive, still includes elements of the old name.
The alternative is to rely on the rights you benefit from even if your trade mark is not registered.
Relying on an unregistered trade mark
Even though you cannot register your trade mark with us here at the Intellectual Property Office, all is not necessarily lost.
If you have used your name, logo or other sign or symbol in the UK for a period of time, so that it has a good reputation, and has come to be associated with your business’s goods or services, it is what’s known as a ‘common law’ UK trade mark.
If you use a common law trade mark, you can bring a 'passing off' court case in the UK against anyone else in your line of business who uses a trade mark that looks or sounds the same as, or similar to, the one you are using. The trade mark does not have to be registered for you to do this, but you have to prove your case in court. You will need to prove:
·That your trade mark has a good reputation (ie there is “goodwill” attached to it).
·That the trade mark is associated with your business.
·That you have suffered damage because of the other trader’s use of it.
Sometimes you and the other trader have both been using the same or a similar trade mark for a similar period of time, but have just never become aware of each other before - for example, because you have been trading in different parts of the country - and you have both developed a reputation on the back of your respective trade marks. It is only because one or both of you is expanding into the other's territory that you realise you are both using the same or similar trade mark. In those circumstances, you may find the other trader has a better right to use the trade mark than you have.
In those circumstances, you may find the other trader has a better right to use the trade mark than you have. Negotiation is usually the best solution - perhaps one of you is willing to change your trade mark by including a reference to a particular geographical region or place. Another solution could be that one of you buys the other's trade mark, compensating them for the costs of rebranding.
Negotiating requires judgment and experience, so you may decide you need legal advice from a solicitor or trade mark attorney.
Further information
Read more about trade marks, including 'common law' trade marks, in IPO publications:
Search the Law Society database
Search the Law Society of Scotland database
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Consider whether there are any other intellectual property rights in your trade mark that you should also protect.
There may be other intellectual property in your trade mark that you want to make sure you own, and to protect. For example:
·Copyright - in the creative aspect of your trade mark.
·Design rights – for the ‘look’ or appearance of your trade mark on your products.
If someone infringes any of your intellectual property rights - for example, by copying your trade mark on their own goods and services - you’ll often have multiple, overlapping remedies. You need expert advice and a risk assessment to make sure you choose the right remedies to pursue, and that you co-ordinate them. If you make the wrong choices, the dispute can be longer and nastier than it needs to be.
It’s usually only relevant for very large companies, but people may produce and sell counterfeits of your goods, including your trade mark. Or there may be piracy - illegal copying of your property. These are criminal offences – go to your local Trading Standards, the police or HM Revenue and Customs if you find evidence of counterfeiting or piracy.
If you haven't done so already, you can find out more about your other intellectual property rights by completing the IP Healthchecks on copyright and on designs.
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Once you have decided which trade mark to use, consider registering it as a domain name and/or a limited company name too.
Registering your trade mark as a domain name on the Internet, or as a limited company name, can be quick, inexpensive ways to give your trade mark added protection. You do not have to use the domain name, or trade through the limited company.
Note, however, that registering it as a domain name or limited company name does not guarantee that your trade mark will be registered by us as a UK trade mark at the Intellectual Property Office.
Domain names
If you haven’t already done so, you may also be able to register your trade mark as an Internet domain name with a registrar such as Nominet
Registration of your trade mark as a domain name will stop other people from registering an identical domain name. If they register a similar domain name, and it is clear that they have done so in bad faith - perhaps they only registered it to offer it for sale to you, or to damage your business - you may be able to apply to have their domain name removed from the relevant register using the registry's Dispute Resolution Procedure. These procedures are quick, easy, relatively inexpensive, and all registries operate one. In addition, registration of the similar domain name may be evidence of infringement of your trade mark rights by the other person, and you can take them to court.
Limited company names
If you haven't already done so, you may also want to register the trade mark as the name of a ‘dormant’ UK limited company at Companies House
That will mean no-one else can register a limited company in the same name as your trade mark. If someone registers a similar limited company name in bad faith, you can apply to a Company Names Adjudicator here at the Intellectual Property Office to have the name removed from the Companies House register, or to require the company to change its name.
It can cost less than £100 to register a dormant company through a professional adviser or company formation agent. You'll need to file a set of dormant company accounts (no filing fee is payable) every year, that you can download from the Companies House website
Note, however, that registering a name at Companies House does not offer general protection against use of that name by anyone else, as many people believe.
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In any event, take steps to make sure that employees and third parties who learn 'confidential information' about your business are legally bound to keep it secret.
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