Should I trade mark my business name?

It’s a question that crosses the mind of every business owner at some point — and, you guessed it — there isn’t a simple ‘yes or no’ answer. However, there are many good reasons to consider protecting your business name as a registered trade mark. Here are four key considerations to help you decide whether this route is right for you.

1. What is a trade mark?

It’s very easy to misunderstand what this form of IP actually is. A trade mark is any sign (word, logo, slogan, etc.) used by its owner to distinguish goods or services from those provided by others. It essentially acts as a ‘badge of origin’ for consumers, letting them know where a particular product comes from and what they can expect from it.

2. Is it possible to protect my business name as a trade mark?

Broadly speaking, a business name can be protected as a trade mark so long as it’s distinctive and you’re using (or intend to use) it in a way which is visible to your customers. Crucially, a protectable business name needs to ‘stand out’ from the crowd in the eyes of consumers.

Think about a UK cosmetics company which decides to trade under the name ‘Make-up Products’. Unless the public is given enough time to become familiar with this name as a trade mark, it will simply be perceived as a descriptive, generic and rather forgettable name. On the other hand, if that same company marketed itself under a distinctive name, the public would be able to rely on it as a ‘badge of origin’ and it would therefore be suitable for protection as a trade mark.

3. Is there anything I need to be aware of?

Trade mark rights are exclusive and territorial. This means that before you start using your mark, you need to be aware of the possibility of ‘stepping on the toes’ of other parties. If, for example, your business began selling shoes in the UK under the name ‘The Nike Shoes Company’, consumers are likely to think that your business was connected with the famous ‘Nike’ brand — and you would almost certainly be sued. So even if you have a distinctive business name, it’s a good idea to conduct searches to identify any earlier marks which could cause you a headache further down the line.

4. How can I protect my business name as a trade mark?

The best way of obtaining legal protection for your business name is to register it as a trade mark in the UK. This would be done at the UK Intellectual Property Office (UKIPO). You’ll need to submit a trade mark application, which must include a representation of the mark, a list of the goods and services you want to protect the mark for, details of the applicant and (of course) the appropriate fee.

Once the application is filed, it’s examined to ensure it meets certain legal criteria, particularly with respect to the mark’s distinctiveness. If it meets these requirements, it gets published and, for a period of two months, third parties may oppose the application on the basis of earlier rights. If the application survives this opposition period, it becomes registered and officially protected as a trade mark for ten years. The registration may then last indefinitely, providing that you renew it every ten years.

The verdict

A trade mark registration is an effective way of protecting the reputation and goodwill of your business if you have:

• a distinctive business name
• conducted searches
• accounted for the possibility of receiving an objection from an earlier rights holder

For specific and detailed advice on trade mark protection for your business, feel free to get in touch with us.