Why should you register your trade marks?

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If you have a company, a brand, a tagline, a logo, or you offer products or services to the public, you probably have trademarks that should be registered. Many clients, regardless of sophistication, do not register their trade marks because of the assumption that the common law of ‘passing off’ (which deals with unregistered trade marks) will protect them. There are many benefits to trade mark registration and reliance on passing off often fails to provide the comfort that registered trade mark protection provides. While it is true that use of your trade mark in commerce will afford some protection of your marks by means of passing off, this form of protection is very limited. Passing off actions are court actions that tend to be both time-consuming and expensive, and you must prove all of the following:

• Goodwill or reputation attached to your goods or services in the minds of the public so that your unregistered trade mark is recognised by the public in the relevant market as distinctive of your goods or services;

• Misrepresentation by the other person (whether or not intentional) leading or likely to lead to the public to believe that the goods or services being offered by them are associated with you; and

• The likelihood of damage (through loss of reputation or sales) suffered by you as a result of the misrepresentation by the other person

In contrast, registered trade marks are significantly easier to enforce and have statutory remedies available under trade mark law.

Many clients also mistakenly believe that registration of their corporate entity is tied to trade mark protection. Registration of your company name with Companies House is not related to trade mark registration and does not provide registered trade mark protection for your company name. If there is ever a possibility that you may expand your business, sell your business or become engaged in trade mark disputes or litigation, you should consider trade mark registration.

Do you plan to expand your business or use of your trademarks?

Being the first person to use an unregistered trade mark does not provide a monopoly right to use it – having sufficient ‘goodwill’ (i.e. market recognition) is key. However, localised reputation attaching to your unregistered mark (in Edinburgh alone, for example) will not entitle you to protection outside the area in which your mark is well known. This means if you are a local company who doesn’t register your trade mark, your competitors could register your exact mark and prevent you from expanding in the future. The registered trade mark would have priority rights in the entire UK, with the exception of a carve-out for the small geographic area of actual use of your unregistered mark. This is true even if your unregistered mark was used decades before the registered trade mark owner filed its application. Accordingly, having a UK trade mark registration establishes a legal presumption of ownership of the mark and the exclusive right to use the mark in the UK (covering Scotland, England, Wales, Northern Ireland and the Isle of Man).

If you advertise your products or services online or have a website, you have worldwide exposure to your trade mark but, without a registration, have extremely limited unregistered trade mark rights.

Furthermore, if you operate internationally, a UK trade mark application or registration can serve as a basis for obtaining international trade mark registration in overseas territories.

Do you want to make money from or sell your trade mark?

Trade marks are often overlooked as business assets because of their intangible nature. However, trade marks and other intellectual property can be the most valuable assets owned by a company. Having a trade mark registration means you can authorise or license others to use your mark and, if you ever plan to sell your business or trade mark, registered trade marks can significantly increase the value of your company. Prospective purchasers are often very aware of the differences in protection between registered and unregistered trade marks and analyzing a company’s intellectual property is almost always a part of the due diligence in a business sale.

Do you plan to enforce your trade mark against infringers or defend your trade mark if someone accuses you of infringement?

You can benefit from the fact that the UK trade mark register is public and therefore registration gives notice to the public of your rights to a particular mark. This not only has a deterrent effect but also allows you to bring trade mark opposition or infringement proceedings through the UK Intellectual Property Office or courts respectively. If you have a UK trademark registration, the court will assume your mark is valid and the burden will be on the infringer to prove otherwise.

Furthermore, if you own a UK trade mark registration you can record your mark with UK Customs. This allows Customs to block the importation of unauthorised and counterfeit goods from entering the UK if they are marked with your registered trade mark.

Are there any other benefits?

Having a UK trade mark registration means your mark is protected for a period of ten years, and this period of protection may be renewed indefinitely. Registration also allows you to use the ® symbol in conjunction with your trade mark. Only registered marks can use the ® symbol. The ® symbol informs your competitors immediately that you are concerned about your trade mark protection and that you have registered your mark. Furthermore, securing a UK trade mark registration can be instrumental in domain name disputes if someone else is using your trade mark as a domain name and can result in a forced transfer of the infringing domain name to you.

Unregistered trade mark rights offer limited protection and the costs of UK trade mark registration are relatively low in view of the broad scope of protection and numerous benefits that registration provides. It is therefore recommended that you protect the investment in your names, products or services by registering your trade mark.

For more information or advice on trade mark registration, contact Edinburgh Intellectual Property specialists, Tidman Legal. 

Tidman Legal is an Intellectual Property (IP), Technology, Internet and Business Law Firm located in Edinburgh, Scotland. The firm offers comprehensive legal services including securing registered protection for trade marks, designs and patents as well as commercialisation and dispute resolution. The firm also provides a wide range of business services, including website terms, technology agreements, ecommerce, licensing, notarisation and more.