The three tiers of trade mark protection

When looking to register a trade mark, it is important that you fully consider your options to ensure you have the right level of protection for your brand from the start.

Intellectual property, especially trade marks are valuable assets to a business, therefore it is important that you are fully protected against third parties trying to muscle in on your success.

There are two considerations when starting to develop your trade mark application, scope and location.

A trade mark can protect a wide number of things and can be in a number of forms. Many businesses have their brand name and logos protected by a trade mark, but you can also protect slogans, tag lines, product names and associated logos. In relation to the actual products or services you provide, your mark will be registered in a class of goods or services (or more than one if you wish) which will consider a specific sector of goods/services.

Equally as important as considering the construction of the actual mark, is a consideration of where you would like protection.

A trade mark cannot be initially registered for the whole world; therefore, you need to consider where you would like protection. The essential locations would be where you trade and where your products are available. This will give you substantial protection against any party trading in the same area as you trying to take advantage of your strong brand.

There are three levels of geographical protection you may apply for, depending where you conduct business.

It is important to note, you must have genuine use in the area in which you have a registered trade mark, therefore you cannot register your mark in a number of countries in which you do not trade or your products are not available.

Firstly, you can apply for a national mark. This will give you protection in just that country. If you were looking to register in just the UK, for example, you would submit an application to the UK Intellectual Property Office who will consider your mark against those already registered with protection in the UK and allow its registration if there is not a conflicting mark already registered. This is a cost-effective way of creating a base level protection, and is exactly what you need if you are solely trading in the UK.

To register a trade mark in the UK, the UK Intellectual Property Office has a fee of £170 as a filing cost, with an additional £50 fee for any further classes you will need protection in. For The Trademarkroom’s expertise and guidance through the whole process, our legal fees are £200 plus VAT.

The next level of protection will allow you to protect your mark in a number of countries through one application. You can apply for an EU wide trade mark. This will protect you in the 28 (at present) member states through one application to the EU Intellectual Property Office. Again, you will need to ensure you are using the mark effectively to continue to have protection. While it has been possible to maintain genuine use in one member state, it is always best to ensure you are trading in more than one EU member state to ensure protection. As it stands, post Brexit, it is unclear how the EU trade mark will adapt when the UK formally leave the EU, therefore we recommend a UK national trade mark to ensure protection in the UK but also an EU trade mark is still a wide- ranging right which will allow you to use your mark in a number of a countries.

This is a higher investment, but the level of protection is value for money.

The EU Intellectual Property Office fees for the application for one mark in one class is €850, with a second class an additional €50. Our legal fees, again to ensure the application goes smoothly and you are fully up to date every step of the way is £350 plus VAT.

The last level of protection is international. As mentioned above, you cannot apply for a worldwide trade mark, but through the Madrid System you can make an application to any of its signatories where you require protection. 114 countries are accessible through the system therefore you can ensure your protection is tailormade to your business.

This is a substantial financial investment therefore, this is a consideration that you should make if you have a secured brand and an assurance of genuine business presence in the countries you are looking to protect in.

There is not a set fee when considering an application through the Madrid System, as it is dependent on whereabouts you are looking to protect, this is in relation to both the application fees and The Trademarkroom fees.

Therefore, if you are looking to protect your brand, please contact The Trademarkroom who can talk you through all your options and ensure you have the best protection for your brand.

Contact Jayne and her team on 02380 000190 to get your brand protection kickstarted.

By Ellis Sweetenham