To Trademark or Not To Trademark?

To trademark or not to trademark? That is the question many small business owners are faced with. Here are some of the five most common questions around trademarking and how to navigate around making those decisions.

1. What is a trademark and does it protect my idea?

A trademark protects your brand, not your idea. It stops other businesses from using your brand (or a confusingly similar brand) in a competing or similar business. For instance, book shop Waterstones has a trademark for the mark ‘Waterstones’. If you set up an e-commerce business selling books, you could not call it Waterstones, Waterstone, Water Stone or H20 Stones as each of those brands are confusingly similar to Waterstones and relate to the same goods and services. However, you could potentially set up a garden centre and call it Water Stone as the business relates to completely separate goods and services.

2. Do I need a trademark in place before I launch?

Under English law, as soon as you start using a brand in the course of a trade you’re protected by a concept referred to as “passing off“. This means that if someone uses your brand in the course of a similar trade in a way that’s likely to confuse customers into believing they’re dealing with your business, you can stop them. That said, it’s easier to prevent infringement if you have a trademark – so it’s worth getting one filed as soon as you can.

3. Can I get a trademark covering the whole world?

Kind of! But it’s extremely expensive. You can apply for a trademark in most countries via the World Intellectual Property Office by paying an initial fee of around 650 Swiss Francs (£550). However, each national regulator will require you to pay filing fees to them, so the cost racks up fast. It’s far better to file for a UK trademark first and then “passport” that mark into other countries. This tends to be a quicker and cheaper way of expanding your protection. Most businesses start with the UK, then move onto the EU and then the US.

4. Can I get a trademark myself?

Anyone can apply for a trademark, but if your brand is the same as (or similar to) existing trademarks the regulator may raise an objection, or the holder of the trademark may raise an opposition. This can land you with additional costs and delays. Some terms are also incapable of being trademarked.

For example, you couldn’t trademark “The Law Firm” as the brand for your law firm. If you apply for a trademark for such a term your application will likely be refused, or worse – you may be granted the trademark but later find that it’s unenforceable. A lawyer should be able to identify marks that may be an issue in advance of making an application and advise you on how to avoid issues.

5. I have found a brand I like – can I launch my goods or services and worry about trademarks later?

Securing a trademark may not be a priority, but checking if there are any competing brands is very important because your brand may infringe existing trademarks. You should always:

• See what URLs are available and check the websites of businesses with URLs similar to your brand.
• Check what social media handles are available and check the business using similar handles to your brand.
• Run a trademark search on the UK government website.
• Run a Google search for your brand and check out the businesses on the first couple of pages of results.
• Ask your friends and family what they think and if your brand rings any bells for them.

ABOUT BUCKWORTHS

Buckworths is the only law firm in the UK working exclusively with start-ups and high growth businesses. With 70% of its clients in technology, of which half are fin-tech businesses, the firm is recognised for its unparalleled expertise in advising start-ups from incorporation, to strategically raising investment, to exit. It has a finger on the pulse of the start-up ecosystem, and offers clients a clear understanding of current market trends.