A Guide to Trade Marks for Start-ups and Scale-ups

Even for a small company, understanding IP can help protect your brand and innovations from others.

While not every company has the resources to invest heavily in IP, ensuring that your most valuable assets are protected can help secure vital funding.

Here’s a quick overview of trade marks and brand rights with some top tips for smaller companies and what you need to know before contacting an IP attorney.

What is a trade mark?

A trade mark is a badge of origin by which consumers find your products or services in the market. Since you guarantee the quality of your products or services, your trade mark acts as a symbol of trust that enables your customers to purchase from you again — safe in the knowledge that your products or services will be the same as before.

Once you are using your trade mark, the goodwill you generate will be associated with it. In this way, your trade mark can become your most valuable business asset.

How should I choose a brand or business name?

If your brand or business name simply describes the goods or services it’s meant to identify — for instance, if Apple sold apples — it isn’t likely to be memorable to consumers. This means that it can be difficult, or even impossible, to protect with IP rights.

Choosing a brand name that has a little more character makes you far more distinctive and helps to keep competitors at a distance. Invented words (such as Xerox) or known words that have no meaning in your industry (such as Amazon for an online marketplace) can provide the broadest protection.

Can I protect my brand or business name as a trade mark?

Generally, a 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.

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 this as a ‘badge of origin’ — making it suitable for protection as a trade mark.

What should I be aware of before using a trade mark?

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 is connected to the famous Nike brand. You would therefore be advised to rebrand or face the risk of being sued for trade mark infringement and passing-off.

Even if you have a distinctive business name, it’s essential to conduct searches to identify the risks of trading under your chosen name.

How can I apply for a trade mark?

The best way of obtaining legal protection for a brand or 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 that it meets certain legal criteria, particularly with respect to the mark’s distinctiveness. If the application meets these requirements, it will be published and — for a period of two months — third parties may oppose the application based on earlier rights. If no oppositions are filed, the application will become registered and officially protected as a trade mark for ten years from the date of filing. The registration may then last indefinitely, providing that you renew it every ten years.

When should I file a trade mark application?

It’s best to file an application to register a trade mark as soon as one has been selected.

A trade mark search indicates that a mark is free for use and registration in relation to the goods and/or services the business intends to supply under the mark. A search provides a snapshot of the mark’s viability on the date the search was conducted and therefore will quickly become out of date.

Ideally, searches and a trade mark application should be arranged before the mark has been used. There is no requirement in the UK or EU that a trade mark should be in use before it can be registered.

How much does a UK trade mark application cost?

The cost of a trade mark application depends on the number of classes of goods and services covered in the application. As more classes are covered, the cost will  increase. The trade mark system divides all goods and services into 45 different classes. It’s important that the most appropriate ones are selected for the application.
Our team will provide you with a bespoke quote upon request.

How much do overseas trade mark applications cost?

Costs depend on the territory of interest and the number of classes of goods and services covered in the application. It’s possible to obtain a European trade mark, which protects your mark for all countries in the European Union. It’s also possible to obtain what is known as an International Registration (a single registration that allows you to designate multiple countries).

Can I file a trade mark myself, without using an attorney?

According to Clarivate (2022), 16% of all self-filed UK trade mark applications were unsuccessful, compared to just 4% filed via a representative. It’s rarely advisable to attempt a ‘do-it-yourself’ trade mark application. Even if you have a deep knowledge of IP, we recommend that you seek the advice of a qualified trade mark attorney before filing an application. This ensures that you have the best chance of success when filing and could save you a significant amount of time, money and stress in the future.

A qualified attorney will be able to advise you on the best representation of the mark to cover in the application. More importantly, they will work with you to ensure that the application covers the correct classes of goods and services by preparing the specific list or specification of goods and services for each class. Once the application has been filed, it’s impossible to add anything that may have been missed, so it’s important to get this right first time.

How do I protect a registered trade mark?

To maintain value, IP rights should be looked after. This means that you should police their use and the filing of applications by third parties. Action should
be taken when you feel that your rights are being infringed, your reputation taken advantage of, or your brand’s distinctiveness eroded.

Trade mark watches can be set up to keep an eye on trade mark applications that are being filed. These help you to identify any potentially conflicting applications early and take a decision as to how you might want to deal with them. The UKIPO and EUIPO won’t refuse a trade mark application based on identical or similar earlier rights — so if you want to stop an application, it’s up to you to raise an objection (usually in the form of an opposition). We also recommend that you set up company name and domain name watches, as this can often provide an even earlier indication that a third party is trying to get into your space.

Ultimately, you should keep an eye on the marketplace and your competitors to ensure that they don’t adopt any marks which come too close to yours. Allowing unauthorised third parties to use trade marks can dilute your brand, reduce its value and weaken any rights you might have. Furthermore, if lots of other businesses are using the brand in a manner to describe the product rather than to indicate origin, the brand can ultimately be considered generic — and if this can be proven,
your registration may be revoked.

You shouldn’t wait until you need to seek advice — working with a qualified attorney should be built-in to what you do. After all, what’s the value of your business without your brand being protected?

What should I do if someone copies or uses my trade mark?

Never contact someone who you believe is infringing your rights. Always contact a qualified trade mark attorney immediately to get strategic advice about the  strength of your rights and the correct approach to take, which must be tailored to your unique circumstances.