Trade Marks for start-ups

Here you can find some of the considerations around trade marks when starting a new business or launching a new product. 

First and foremost - what is a trade mark? 

A trade mark is an identifier, something that distinguishes your business or product or service from others.

The most common types of trade marks are words, logos and slogans. But they are also sounds, colours, packaging, smells and other elements of your branding that act as an identifier for your business.

Almost all businesses have them, and protecting them early can pay dividends (literally) later.

But before you adopt a trade mark, you need to ensure it is available for you to use. Skipping this crucial step can have disastrous consequences.

What do I mean by 'available'? 

I mean that your trade mark, or one confusingly similar to it, is not already in use or registered by anyone else for the goods or services you offer.

And what do I mean by 'confusingly similar'?  

If there is a likelihood that your trade mark will be confused by consumers with another you may not be able to use or register it.

And although you might not think it's too close, the law may disagree. So taking advice from a professional and conducting clearance searches as early as possible will ensure no surprises down the line.

The importance of searches

So often clients come to me when a claim of infringement lands on their desk. By then, they've launched, or are about to launch, had their packaging produced, built their website, spent £££ on marketing, and now all of that is at risk. All the time and expenditure will be wasted if they can't go ahead with their product, or worse, have to pull it from the shelves.

This can be easily avoided by conducting proper searches before adopting a new trade mark.

• It is not enough to do a Google search for your mark

• It is not enough to check Companies House for identical names

• It is not enough that you have registered all the relevant domains

• It is not enough that you 'know your mark is unique' 

Professional clearance searches are done by specialist searching companies

They'll find identical and confusingly similar trade marks, company names, domain names and unregistered trade marks

Because 'similar' can be as problematic as 'identical'

And as for whether or not they are confusing, you are not the judge! 

The main reasons why people don't do searches are:

1. They didn't know they should

2. They didn't see the value 

Not knowing that an earlier trade mark is out there is not an excuse, or a defence if you infringe. 

And it can be more expensive to conduct searches than to register your trade mark. But trust me when I say that I've seen countless businesses get caught out.  

And if you think searches are costly, it's a drop in the ocean compared with a rebrand, or worse still, defending yourself in an infringement action. 

The moral of the story: assess the risk at the outset, launch with confidence!

Registering your trade mark

You've cleared your trade marks and are ready to apply to register them. But what should you register exactly? 

And are there any restrictions? 

✅ Plain block caps are best for word marks - they protect your mark in any form

✅ You'll need a separate application for your logo, if you have one

✅ Do you have a strapline or slogan? You can register that too

✅ Anything else? Think packaging design, colours or shapes of products 

❌ You can only have one mark in each application (usually) so if budget is tight we'll consider the most cost-effective approach

❌ Trade marks can't be registered if they're descriptive or not distinctive

❌ You can't register a mark that is offensive or contrary to public policy 

Having a strategy in place will mean you get the best protection for your trade marks at a cost manageable to your business. 

As the business grows you can expand your portfolio but starting with your key brands gives you a solid base for your valuable IP assets.

Monitoring and enforcement

So that's it for 10 years until you need to renew your registration. 

Well, yes and no. 

There is nothing else you need to do with the registration itself. But what's the point of having one if it doesn’t DO something for you? 

The first thing you should do is monitor it. You can set up a watch service that will notify you of identical or similar trade marks being applied for.

Online monitoring will also help to spot any unauthorised use online so you can stamp that out too.

If anybody encroaches on your precious trade mark you can object. If it's an application to register an identical or similar mark the most cost-effective way to challenge it is using the UK IPO's opposition process. 

To stop someone using an offending mark ultimately you may need to pursue them for infringement in the courts. But that's a last resort and usually a written request will have the desired effect.  

Also remember your trade mark registration is a business asset. It can earn you money if you choose to allow third parties to use it via a licence or franchise, for example. 

Brand collaborations are also big business, elevating both brands and reaching new customers.

Think how your trade mark could work for you.