What does a trademark protect?

As specialist IP lawyers we get asked two main questions in terms a trademarks:

1. What is a trademark?

2. What does a trademark protect?

A trade mark is a sign which distinguishes the goods or services of one business from those of another. The most common signs registered as trademarks are brand names and logos. There are various other brand identifiers that can be protected too, such as slogans, colours, sounds, motions, and smells. It is important to distinguish brand names protected by trademarks from:

a. A company’s name registered with the Companies House

b. Domain names

Registering the company’s name with the Companies House does not provide you with any trademark rights. And neither does the registration of a domain name. This means that you will not be entitled to stop third parties from using the name in the course of trade. Therefore, it is crucial to register a trademark with the Intellectual Property Office, in addition to acquiring the domain name and registering the company name.

When you apply to register a trademark, you will need to choose the goods and services that you provide under this mark. There is an internationally accepted classification of goods and services comprising 45 classes in total. Each class comes at an additional cost, so it is important to consider carefully what goods or services are relevant to your business. You want to have broad enough protection to cover potential diversification in the future without racking up a huge registration cost.

There is no such thing as a worldwide trademark. Trademarks are territorial in nature, therefore you need to register a trademark in each country where you would like to protect it. For most UK businesses, protecting your trademark in the UK is a good starting point initially. Still, if you’re considering (or are already) expanding internationally then you’ll want to register your marks abroad too. Before starting to use a brand name or applying to register it as a trademark, it is important to conduct clearance searches to ensure the name (or even a confusingly similar name) is not already in use, or someone else has the registration. This will allow you to avoid problems in the future in the form of a cease and desist letter or opposition to your trademark application, which could force you to re-brand and pay compensation to the trademark owner. Once you successfully register a trademark with the Intellectual Property Office, you will get a monopoly right to use the mark in relation to the goods and services for which is it registered. This means that you will be able to stop third parties from using your mark in specific circumstances. Namely, if another individual or company infringes your trademark.

Besides from stopping infringement, there are other reasons why it is worth registering a trademark for your brand. For example, a trademark is a valuable intellectual property right that has the potential to add value to your business. You can sell it (assigned), license it, or use it as security.