Comprehensive Trade Mark Registration Services

A trade mark is a brand, a sign or symbol used in relation to goods or services to distinguish them from similar goods or services supplied by others. When registered, trade marks provide enhanced protection for brands. Typically a name, a word or combination of words or a logo, trade marks enable people to distinguish between the variety of brands in the marketplace or, in the case of charities, the plethora of charitable causes which they might wish to associate themselves with and donate to.

Typically, a trade mark gives consumers a guarantee of the identity of the origin of products or services by enabling them to distinguish, without any possible confusion, that the product or service is genuine. For charities, trade marks are also an important way of ensuring that fundraising activities can be directly linked with the charity and that monies raised are for a particular charitable cause.

Your organisation's brand is likely to be capable of trade mark protection in one way or another. By registering your organisation's brand you are making it easier to stop someone from misleading the public by using your brand. It might also reduce the chance that they will try.

By registering a trade mark, it enables the brand-owner to protect it more easily and it can increase the reputation of the brand and other people’s willingness to invest in it, leading to innovation and the development of new products and services which have a social impact. Protecting a brand as a trade mark also creates a strong right for the purposes of licensing a brand, for example to a distributor, a sub-contractor or a subsidiary or in the context of a collaboration partnership.

Take our two-minute trade mark test to see how well-protected your brand is.

A registered trade mark would usually be the organisation's name and logo or it might be the name of a product, service or campaign. There are also unusual forms of trade mark, such as sound trade marks. In order for a sign to be registrable as a trade mark, it must be distinctive and not descriptive, for example of the goods or services for which it is registered or of a geographical location.

A trade mark is registered with the Intellectual Property Office in the country or territory where you want it to be protected, which might be where the organisation operates or where goods are manufactured.

It needs to be registered against specific classes of goods and services and it is essential that the description of goods and services included in a trade mark application is accurate because it cannot be added to at a later date.

A registered trade mark is capable of lasting indefinitely, provided that it is renewed every 10 years, although it can be cancelled for five years of non-use or if a successful application is made by someone who claims to have an earlier, conflicting trade mark. It is therefore essential to ensure that there is freedom to register and use a trade mark before filing an application or adopting a new brand by carrying out clearance searches.

A trade mark should also be updated if the appearance of the mark changes over time or the goods and services for which it is protected are out of date.

If you do not register a trade mark, you might be able to rely on the law of passing off in the UK to protect the mark. In order to succeed in a claim for passing off, you will need to satisfy the following test:

there is a reputation and goodwill attached to the mark;
the public associate the mark only with the organisation and its goods and services;
a third party has misrepresented to the public a connection with the organisation through use of a similar mark and that this has led to confusion of the public (or a likelihood of confusion); and
this has caused damage to the organisation or the brand

Passing off is a much harder claim to prove than trade mark infringement due to the amount of evidence required of goodwill and reputation and of association of the mark with the organisation. Therefore, if you have a trade mark capable of trade mark registration, then it is worth registering to protect your organisation's name and reputation and save the costs of having to rely on passing off.

A registered trade mark confers the right to the exclusive use of the mark in connection with the goods or services for which it is registered. It gives the owner the right to sue for trade mark infringement if another party uses an identical or similar mark in the course of trade without permission.

Registered trade marks can also be used in domain name dispute proceedings when the mark is included in a domain name without the brand-owner’s permission.

If you would like to discuss registering a trade mark or protecting your intellectual property, please contact Gavin Llewellyn on 020 7324 1524 or GavinLlewellyn@stoneking.co.uk.

We provide a full trade mark registration service including:

Advice on appropriate trade marks and their registrability,
Advice on the goods and services to be covered by the trade mark and drafting of the specification of goods and services,
On-line identical mark clearance searches in order to identify potential conflicts with existing, trade marks registered in the UK, the EU or individual Member States of the EU as appropriate (subject to availability of on-line databases) and advice on potential conflicts,
Preparation and filing of trade mark applications before the UK Intellectual Property Office (UKIPO) and World Intellectual Property Organisation (WIPO),
Prosecution of trade mark applications in Opposition proceedings filed against an application and conduct of Opposition proceedings against other people’s applications,
A network of overseas lawyers specialising in trade mark registration for advice on country-specific applications and other issues.

We are happy to offer fixed fees for trade mark application work and to discuss cost budgeting on a case-by-case basis for substantial trade mark filings involving significant numbers of classes of goods and services and multiple jurisdictions.

Find out more about the process of obtaining a trademark registration here