Should I Trade Mark My Business Name?

One of the most common questions we receive from startups, and even established SMEs, is: “Should I trade mark my business name?”.

A trade mark is a vital, valuable commercial asset for any business. We highly recommend that any company registers their brand name as a trade mark if the name is eligible and available.

As a minimum, you should consider registering your business name as a mark in the UK via the government’s intellectual property office (the UK IPO). International brands may also wish to register their business name overseas. Registering with the EUIPO covers all 27 member states in the European Union, for example. However, trade marks further afield can require individual applications in each country you wish to target.

Do I need to trade mark my business name?

It’s not a requirement to trade mark your business name in the UK or elsewhere, but doing so will provide you with exclusive rights.

As such, it’s worth taking the time to strongly consider the benefits of trade mark protection for your business, which we’ll outline below.

Why should you trade mark your business name?

If you register the name of your business as a trade mark, then only your business is allowed to use that name for the goods and services it’s registered against. You can pursue legal action against anyone who infringes your rights without permission, such as those imitating or copying your business name.

A registered trade mark also gives you the right to stop third parties from registering identical or similar marks in classes of goods and services that are identical or similar to your mark. This means you have exclusive use of the name.

As you can see, a trade mark can be crucial for deterring infringement and enforcing your rights against third parties.

But that exclusivity is even more important as your business grows and the brand becomes more recognisable. Not only does this help attract and retain customers, but the trust and goodwill associated with your brand significantly boosts the value of the business as a whole (which is highly beneficial should you seek investment or a sale of the business).

Can my business name be registered?

Not all business names may be registerable as trade marks. There are circumstances where there may already be similar or identical trade marks on the register, which can present a serious issue for your brand. Or, your name may not be eligible for registration due to one or more of the following reasons:

• Offensive: marks containing swear words or offensive terminology are prohibited
• Descriptive: marks that are purely descriptive of the goods or services they relate to are prohibited, e.g. a hairdresser may struggle to register ‘hair salon’ as a trademark business name
• Misleading: marks that are misleading cannot be registered, e.g. using the word ‘vegan’ if the product is not actually vegan.
• Distinctive: marks must be distinctive and avoid common or generic words, phrases, and shapes
• Resemblance: marks must not resemble state symbols, like flags or hallmarks

A trade mark registration lawyer can advise on the eligibility of your business name and preemptively determine the likelihood that your application will proceed smoothly, without hitting any speed bumps along the way.

They can also conduct clearance searches to identify any identical or similar marks already on the register – doing this prior to an application saves you time and money in the long-run.

Can I only trade mark my business name?

No, there are a number of different assets a business owner can register as a trade mark. Aside from your name, you can also register your logo, distinctive brand colours, slogans, and more.

A word mark would give your business name broader protection, whereas a logo mark is more limited protection in respect of that particular figurative logo. Nevertheless, each trade mark will add identifiable value to your business.

If you ever came to sell your business in the future, potential buyers will want to ensure the brand is protected. And they’ll want to be able to continue using the business name after the purchase. Plus, a registered trade mark can hold significant value and much like any tangible asset, it can be bought, sold, and licenced.

When to register your business name as a trade mark?

Now we’ve established that business names can become valuable assets through trademark registration, a logical next step is to consider when to register your name.

We believe it is best to trade mark your business name as early as possible. It can seem like an added expense, but it should be seen as a long-term investment given the benefits discussed above.

But before you rush off to complete the trademark application process, speak to a lawyer. You don’t want to submit an application only to have it rejected for falling foul of the eligibility rules, or to receive an opposition claim from a business with a similar trademark.

Even if you decide not to register the brand name immediately, you should still check for conflicting marks. Let’s say you start to build a successful business, but you suddenly receive a cease and desist letter from a company alleging that you’re infringing their trade mark. They may have a claim for financial compensation and force you into an unwanted rebrand.

How to trade mark a business name in the UK

To trade mark a name in the UK, you must complete the following steps:

1. Check whether the name passes the eligibility guidelines
2. Conduct a clearance search to see if there is an existing trademark covering similar goods or services
   • Decide how to proceed if there is a competing mark
3. Decide which trademark classes you wish to register in (classes are used to categorise different goods and services)
4. Complete an application to register a trademark with the UK IPO
5. Pay the fees – online applications cost £170 for a single class, plus £50 per extra class
6. Wait for the UK IPO to conduct an examination and deal with any objections they raise within two months
7. If your application proceeds to the next stage, it’ll be published in a public journal for two months. If other businesses or individuals raise an opposition, you’ll need to resolve it. If there is no opposition, your application will be registered for ten years, and then you’ll need to renew it.

If you require assistance registering a trade mark or doing detailed clearance searches, we can help. Feel free to contact one of our expert solicitors using the form below.