Why register a trade mark for your charity’s name and logo?

Intellectual property (or “IP”) is an important asset of any organisation and can take many different forms. Therefore, it is important to understand what IP your organisation has, as well as how best to protect it and be in a position to exploit its commercial, educational, or social value. 

In particular, since charities need to protect their valuable reputation against erosion or damage, trade marks are an important form of IP. The most effective way for your organisation to protect its brand (including its name and any associated imagery, such as a logo, as well as names of campaigns, products and services) is to apply to have it registered as a trade mark. Registered trade marks allow you to stop other people from using trade marks which are either:

• identical for identical goods and services to those for which the trade mark is registered;

• identical for similar goods and services such that confusion is likely to occur; or

• similar for identical or similar goods and services such that confusion is likely to occur.

So, registered trade marks enable you to prevent the use of identical trade marks to your brand, and also similar marks which might be confusing to the public. 

You can also use registered trade marks to:

• help combat domain name “cybersquatters” who seek to hold an organisation to ransom and extract money for releasing a domain name they have registered or simply use it for fraudulent purposes;

• help protect against unauthorised use of the organisation’s name and brand imagery on websites, social media or other platforms in order to create an association or impression of some form of endorsement, collaboration or partnership;

• oppose an application to register a trade mark which conflicts with your registered trade mark(s), as described earlier;

• challenge the use of the organisation’s name as part of the name of another organisation, such as a registered company name which could again be used fraudulently; and

• enter into brand licensing, sponsorship and other commercial participation agreements which allow controlled use of your brand by a partner organisation or a trading subsidiary for specific purposes.

Is your organisation’s name and logo capable of trade mark registration?

Provided that it is a distinctive name, your organisation’s brand is likely to be capable of trade mark protection and, by registering a trade mark for the name and any associated logo, it is easier to stop someone from using a similar name or logo in connection with the same or similar products and activities.

In order for a trade mark to be registered, you must ensure that it is distinctive and not descriptive of the goods or services for which it is to be registered, not laudatory or a term which is customary in a particular trade, and does not conflict with an earlier registered trade mark or unregistered brand which has a reputation and is protected by the law of passing off. 

You should therefore consider whether any descriptive or non-distinctive elements of the brand should be omitted from any proposed trade mark application in order to ensure that your registered trade mark is as distinctive (and therefore enforceable) as possible.

How do you go about registering a trade mark?

Once you have decided on the name or logo you would like to trade mark, you must decide on the goods and services you would like to register the trade mark for. It is important to ensure that you only register the mark for the goods and services you are using or are planning to use in conjunction with the trade mark. If you register a mark for goods and services which you never in fact supply under the mark, your trade mark could be challenged on the grounds of non-use after five years.

A registered trade mark is capable of lasting indefinitely, provided that it is renewed every 10 years and it is not cancelled for non-use or by someone with an earlier conflicting mark. 

It is possible for a trade mark to be registered in multiple jurisdictions and, for full protection, your organisation should register its trade mark(s) in all countries that it operates in or, for international federations, where members of the federation operate. You can use the international trade mark system to extend your protection to other countries or, alternatively, you can apply in individual countries to protect your mark. The option that is best for you will depend on the specific countries you would like to apply in and how many countries there are. 

If you do not have a registered trade mark and you believe someone is misusing your brand, you may be able to rely on the law of passing off in the UK. However, it is much harder to bring a successful claim in passing off than a trade mark infringement claim, as a significant amount of evidence of the goodwill and reputation in the mark is required, which can be time-consuming and costly to put together.  Therefore, if possible, it is worth registering your organisation’s name and logo as trade marks for stronger protection.

If you would like any further information about protecting your organisation’s trade marks or other intellectual property, please contact either Gavin Llewellyn (GavinLlewellyn@stoneking.co.uk) or Charlotte Woodmore (CharlotteWoodmore@stoneking.co.uk) in our Intellectual Property Team.