To trade mark or not to trade mark, that is the question

We get a huge amount of calls from potential clients who simply want to know if it is worth registering a trade mark. Some of these calls are from people who have been trading for many years and never had a problem and others are from people who are a new start up and wish to make sure everything is above board and protected before their dreams start to become reality.

It is first worth noting that there are registered and unregistered intellectual property rights. This means that those rights which have not been registered will still afford some protection. The issue is the financial battle to prove this and it can sometimes not go your way.

Essentially, registering a trade mark is a way of protecting those rights further and gives the holder the ability to warn third parties that they have full protection over the mark and done by adding the R symbol next to it. If a mark is not registered and a third party effectively ‘gets there first’, they can prevent you from using the mark. If you wished to fight it, it would be costly and would involve you having to show that you acquired distinctiveness over the mark over time. Prior use will not be sufficient on its own unless it is clear that you have years and years of use and that the general public would easily maintain a connection between your mark and its origins and that any other such registration would provide a likelihood of confusion as to the ownership of such mark.

To register a mark, consideration must be made to determine the different territories that the good and services of which the mark is attached to is being marketed or if your vision for the next 5 years is to market in that territory even if you do not yet. Also, consideration must be given as to who else already has protection in a particular territory. This is useful if a new business is deciding on the name of the mark which the goods and services are being marketed under because upon a detailed search, it may be necessary to stay clear of some suggested marks if it is apparent that a third party has prior rights. This will save time and money moving forward.

The last thing that anyone wants is to have a scary letter through the door because a third party has registered a mark which you have been using but not consider registering it and then you are asked to cease and desist from using it effective immediately which may mean wasted stock, rebranding costs and in turn be liable for the third party costs.

Our advice is to protect your mark further and register the trade mark, even if you start off in the one territory such as UK and then save up more money to extend that protection over time. For further information on prices for Trademarkroom to register your trade mark including our prices to conduct a search of the register (UK, EU, US), please see the prices page of this site or even pick up the phone.