A trademark is any sign:
1. that is capable of being represented graphically; and
2. that is capable of distinguishing the goods and services of the applicant from those of others.
The sign must be either drawn, or written in words, numbers of other symbols. Generally, smells and scents cannot be represented graphically and so cannot be trademarked.
For a trademark to be capable of being distinguished, the trademark as a whole must be distinctive. This means that the components of the trademark must create an overall impression that is unique.
The benefits to registering a trademark are as follows:
1. Unlimited Protection
It allows the registered holder a potentially unlimited period of protection, as a trademark can be renewed every ten years without limit.
2. Exclusive right to use
Once registered, no other person can use the trademark unless with express consent. This allows a registered holder the ability to sue if there is an infringement.
3. Registration prior to use
A trademark can be registered in the UK prior to the product actually being launched.
An application to register a trademark must be refused if any of the following applies:
1. The trademark cannot be represented graphically;
2. It is devoid of distinctive character/is not unique; or
3. The trademark consists exclusively of indications of the trade or product or intended purpose of the goods or services. For example, you cannot register a trademark such as “Good Paints” if you are intending to sell paints, as this amounts to an exclusive indication of the product.
There are several other grounds on which an application may be challenged and subsequently refused, such as:
1. The trademark is identical to an earlier trademark;
2. The trademark is so similar to an earlier trademark that it is likely to cause confusion to the public; and
3. It is detrimental to the distinctive character of an earlier trademark.
Step 1: Check the Register
Check whether the trademark has already been registered on the trademarks database. You should ensure that there are no other trademarks in the same class of goods or services you intend to use.
Step 2: Apply to the Intellectual Property Office
Assuming there is no mark already registered, you can apply to the Intellectual Property Office to register your mark.
You must include details of the trademark you intend to register and will need to pay the applicable fee. You need to state the class of good(s) or service(s) you intend to register the trademark in.
Step 3: Respond to oppositions
You will need to deal and respond to any challenges or oppositions raised to your application.
The Intellectual Property Office will give you a certain amount of time to respond in full to challenges