About trade marks
What is a trade mark?
A trade mark is a sign which distinguishes your goods and services from those of other businesses. Your trade mark could also be described as your ‘brand’ and can be made up of words, logos or a combination of both.
What are trade mark classes?
Trade marks must be registered in one or more of 45 ‘classes’: 34 classes for goods and 11 for services. Classes group products that are deemed to be similar areas of trade and are identified by their numbers. Classes can be non-intuitive and complicated to work out – for example, photography is mentioned in five different classes, but the services of a professional or studio photographer are only in class 42 and easily missed - which is why it’s best to submit your trade mark application through a professional service.
The fees that you pay for your application reflect the number of classes under which you need your trade mark to be registered. Once you make your application to Trade Mark Direct’s expert team, we’ll make sure that your trade mark application is submitted under all the relevant classes, so ensuring that your brand will befully protected once your registration is complete.
Do I need a trade mark?
If you run a business without a registered trade mark, your competitors could:
- Register your trade mark, forcing you to rebrand;
- Conduct business using your trade mark or a very similar trade mark, deriving benefit from and/or damaging your reputation.
Without a registered trade mark, your brand is completely insecure. A registered trade mark:
- Belongs to you, so you can sell it, or let other people have a licence that allows them to use it;
- Will help to put people off using your trade mark without your permission;
- Lets you take action against anyone using your trade mark without permission;
- Allows the authorities to bring criminal charges against counterfeiters.
Am I covered because I own my domain name?
No, owning a domain name does not offer your trade mark any protection under the law. If you want to protect your brand, you must register your trade mark.
Am I covered because my business is registered at Companies House?
No, registering your business at Companies House does not offer your trade mark any protection under the law. If you want to protect your brand, you must register your trade mark.
What is allowed as a registered trade mark?
To be registrable, trade marks must be distinctive for the goods and services you provide. A registered trade mark must allow consumers to differentiate your goods or service from another company’s.
For this reason, made up words are generally acceptable as trade marks. Real examples are:
Examiners will also accept word marks involving known names, if none similar have already been registered, such as
- Fortnum & Mason
- Wayne’s Patisserie
- Shakespeare shipping
Also, common words used in unfamiliar ways:
- Snail Plumbing
- Air Publishing
- Salt CDs
What is not allowed as a registered trade mark?
Trade mark applications will be refused if the trade mark describes your goods or services or any characteristics of them:
- Leather Handbags
- Japanese Plates
- Cheaper Flooring
Examiners will also refuse to register trade marks which are made up of descriptions customary in your line of business:
- Tastes Great Chocolate
- Built To Last Beds
- Taxis Direct
Trying to get around the distinctiveness or common phrase barrier by intentional misspelling does not work:
- Klever Klene
- Supa Food
Your trade mark application will also be turned down if it includes offensive words or images; is against the law in any way e.g. promoting illegal activities; or is deceptive – attempting to persuade the public that your goods and services have a quality which they do not.
Examples of acceptable and unacceptable trade marks
|Trade mark||Goods / services||?||Comments|
|3 3/7||any||Common description: many say they operate 24/7|
|Shoes Direct||mail order shoes||‘Direct’ is widely used - specifying shoes does not help|
|Wonderstuff||oil lubricant||Joining words together does not make a mark acceptable|
|Klever Klene||cleaning||If a word or phrase spelt correctly would not pass, misspelling does not help|
|Quickshop.com||internet||Presenting as a domain name (.com, .co.uk) does not help|
|Monkey Nuts||clothing||Acceptable for clothing as not common usage. Would not pass for food, animals, etc.|
|Pink Box||computers||Is now distinctive|
|Zooby 24/7||any||Is now distinctive|
|Monteverdi Direct Trade Mark Services||trade mark services||Is now distinctive|
|Slippery Sid’s Wonderstuff||oil lubricant||Is now distinctive|
|Kevin’s Klever Klene||cleaning||Is now distinctive|
|Quacks.com||internet||Is now distinctive|
Can an existing word be registered as a trade mark?
Yes, providing the existing word:
- Distinguishes your business from others;
- Does not describe your goods or services;
- Is not already registered to or bear similarity to a registered trade mark of another business working in your line of trade;
- Isn’t offensive;
- Does not promote illegal activites;
- Does not attempt to mislead the public.
What are aural, visual and conceptual similarities?
Trade mark applications will be refused if your trade mark bears:
- An audible similarity to an existing registered trade mark, e.g. Amuhzone Books;
- For logo trade marks, a visual similarity to an existing registered trade mark, for example – a copy of the Heinz Beans registered trade mark with the name of your own brand of beans in the same font;
- Conceptual similarity, e.g. Eliza Hairbrushes and Elise Haircare.
Can two businesses own the same trade mark?
Two businesses can register the same trade mark provided their areas of trade do not overlap, e.g. Houndstooth Estate Agency and Houndstooth Tree Surgeons.
Can I use another company’s registered trade mark?
If your line of business is the same or similar as the company’s whose registered trade mark you want to use, then by using their trade mark you could be subject to legal action or even criminal charges. Even if you think that your business operates in a different sphere, because some trade marks are registered under many different ‘classes’, i.e. industries, by law your activities could still be infringing on their registered trade mark. The only way to be certain that your use of a trade mark does not contravene trade mark law is to register it with the proper authorities.