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All businesses have to trade under a name. But unless you are careful there can be hidden, or not so hidden, pitfalls in choosing a name for your company and/or the products or services that you trade under. Intellectual Property (IP) is a factor that all businesses must be aware of. In this article, which is meant to be informative but not a substitute for legal advice (which takes all circumstances and nuances of law into account), we will take a look at that part of IP that comprises trade marks.
1. What is a trade mark?
A trade mark identifies goods and services as originating from or being commercially associated with a particular enterprise. It thus differentiates the goods and services from those of other traders. Typically, a trade mark would consist of a word or logo or a combination of both.
2. What is the difference between a company name and a trade mark?
A company name merely identifies a company or designates a business that is being carried on. If, however, the name is affixed to goods or services or used in such a way as to establish a link between the company name and goods and services marketed, then the name is being used also as a trade mark. This use could be unlawful if someone else had a registered trade mark that was identical or similar. Having a company registration at Companies House does not automatically give you rights to use the name in a trade mark sense. Company law and trade mark law are quite separate. But if you had a registered trade mark, this would act as a defence against alleged infringement of another’s rights.
3. What about domain names?
A domain name serves as an Internet identifier or address. There are no inherent Intellectual Property Rights in a domain name so that, for example, someone else could legitimately register the identical domain name as a .co.uk that you first had as.com. If they start doing the same kind of business as you there might be little you can do about it (you might, for example, try to prove bad faith through a dispute resolution procedure in order to get the registration transferred, but this can be quite difficult to do). A domain name might be registrable as a trade mark, in which case you would have broader rights to stop the use of the other domain name. Some care should be taken if you start trading under a domain name (much like a company name) so that you don’t infringe the rights of another who has an identical or similar trade mark. Conversely, someone else’s domain name is not necessarily an obstacle to you registering your mark. If unsure about where you stand, you might wish to seek professional advice from a trade mark attorney or IP solicitor.
4. What exactly is a registered trade mark?
A registered trade mark is a mark that has been published on the official register of the Trade Mark section of the UK Intellectual Property Office. This register gives details of the mark, the goods and services for which the mark is protected (grouped in classes), and the owner. The purpose of this register is to give notice to others that you have the rights to this particular sign. If you have a registered trade mark you can put the ® symbol next to it to warn others against using it. However, using this symbol for a trade mark that is not registered is an offence.
5. Why should businesses protect themselves with a registered trade mark?
A registered trade mark gives the owner the right to stop others not only using the identical sign, but also confusingly similar signs if they are being used in the same or similar field of activities. This will protect your trading activities within the market place. The alternative is to risk dilution of your business goodwill and reputation and the loss of customers. The worst-case scenario is to find that you have been using in good faith a sign that infringes the registered trade mark of another party. This might mean that you will have to cease trading under your chosen name.
6. What should my business do?
Make sure your trading names have been cleared. Why not search the trade mark register to find out who else might have a trading name similar to yours, and whether there might be conflict? A trade mark attorney can help you with this. Better nip a problem in the bud then have serious problems down the line.
If the name is available, why not register it? A registered trade mark can become a truly valuable asset if your brand really takes off. Like other property, it can be sold or licensed to others for a fee. It could become even more valuable than all the other aspects of your business. The UK Trade Mark Office works on a first come first served basis. If you fail to register your mark now, you may find that when you eventually come around to doing it, it is no longer available. And this brings its own problems. Can you afford to delay?
This article first appeared in the February 2008 issue of Your Network - The official monthly magazine of The Ultimate Business Network (Cambridgeshire Chambers of Commerce)
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All businesses have to trade under a name. But unless you are careful there can be hidden, or not so hidden, pitfalls in choosing a name for your company and/or the products or services that you trade under. Intellectual Property (IP) is a factor that all businesses must be aware of. In this article, which is meant to be informative but not a substitute for legal advice (which takes all circumstances and nuances of law into account), we will take a look at that part of IP that comprises trade marks.
1. What is a trade mark?
A trade mark identifies goods and services as originating from or being commercially associated with a particular enterprise. It thus differentiates the goods and services from those of other traders. Typically, a trade mark would consist of a word or logo or a combination of both.
2. What is the difference between a company name and a trade mark?
A company name merely identifies a company or designates a business that is being carried on. If, however, the name is affixed to goods or services or used in such a way as to establish a link between the company name and goods and services marketed, then the name is being used also as a trade mark. This use could be unlawful if someone else had a registered trade mark that was identical or similar. Having a company registration at Companies House does not automatically give you rights to use the name in a trade mark sense. Company law and trade mark law are quite separate. But if you had a registered trade mark, this would act as a defence against alleged infringement of another’s rights.
3. What about domain names?
A domain name serves as an Internet identifier or address. There are no inherent Intellectual Property Rights in a domain name so that, for example, someone else could legitimately register the identical domain name as a .co.uk that you first had as.com. If they start doing the same kind of business as you there might be little you can do about it (you might, for example, try to prove bad faith through a dispute resolution procedure in order to get the registration transferred, but this can be quite difficult to do). A domain name might be registrable as a trade mark, in which case you would have broader rights to stop the use of the other domain name. Some care should be taken if you start trading under a domain name (much like a company name) so that you don’t infringe the rights of another who has an identical or similar trade mark. Conversely, someone else’s domain name is not necessarily an obstacle to you registering your mark. If unsure about where you stand, you might wish to seek professional advice from a trade mark attorney or IP solicitor.
4. What exactly is a registered trade mark?
A registered trade mark is a mark that has been published on the official register of the Trade Mark section of the UK Intellectual Property Office. This register gives details of the mark, the goods and services for which the mark is protected (grouped in classes), and the owner. The purpose of this register is to give notice to others that you have the rights to this particular sign. If you have a registered trade mark you can put the ® symbol next to it to warn others against using it. However, using this symbol for a trade mark that is not registered is an offence.
5. Why should businesses protect themselves with a registered trade mark?
A registered trade mark gives the owner the right to stop others not only using the identical sign, but also confusingly similar signs if they are being used in the same or similar field of activities. This will protect your trading activities within the market place. The alternative is to risk dilution of your business goodwill and reputation and the loss of customers. The worst-case scenario is to find that you have been using in good faith a sign that infringes the registered trade mark of another party. This might mean that you will have to cease trading under your chosen name.
6. What should my business do?
Make sure your trading names have been cleared. Why not search the trade mark register to find out who else might have a trading name similar to yours, and whether there might be conflict? A trade mark attorney can help you with this. Better nip a problem in the bud then have serious problems down the line.
If the name is available, why not register it? A registered trade mark can become a truly valuable asset if your brand really takes off. Like other property, it can be sold or licensed to others for a fee. It could become even more valuable than all the other aspects of your business. The UK Trade Mark Office works on a first come first served basis. If you fail to register your mark now, you may find that when you eventually come around to doing it, it is no longer available. And this brings its own problems. Can you afford to delay?
This article first appeared in the February 2008 issue of Your Network - The official monthly magazine of The Ultimate Business Network (Cambridgeshire Chambers of Commerce)
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