What is a Trademark?
Trademarks are a vital to your company’s identity and branding. Your trademark enables others to recognise your products and services as being supplied by you.
Your trademarks can include your company logo, company names, domain name and other distinctive words, phrases or graphics that distinguish your products and services from others in the market.
Common examples include the name Coca-Cola, the Nike tick and the Apple logo. Sounds and shapes can also be protected such as the shape of the Chanel No. 5 bottle and the Intel sound.
Trademarks are an important business asset and can attract considerable value and goodwill. Trademarks can be of significant importance when licensing, franchising, assigning or selling your business.
Why Do I need to register my trademarks?
If another company uses your trademark this can:
- confuse customers
- lose sales
- devalue your products and services
- devalue your company.
Registration of your trademarks is the best way to protect these important business assets and prevent others from using the same or similar name or mark.
If you have a registered trademark you will be able to enforce your rights against another party who is using your trademarks and stop them from damaging your business.
Will a UK trademark registration protect me in other countries?
Trademark rights are territorial and only give protection in the countries where they are registered. If you only have UK protection, other people may be allowed to use your trademark abroad without you being able to do anything about it.
If you are thinking of trading abroad, you should consider registering your trademark in each of the countries in which your wish to trade to protect your company and your brand.
You should check that your trademark is not similar to one already registered in that country. If your trademark is available, you should get it registered as soon as possible.
How do I register a trademark abroad?
You can apply to the trademark office in each country in which you wish to trade or apply for European or international trade mark protection.
In the EU: If you need to register a trademark in countries that are members of the European Union (EU) you can apply for a Community Trade Mark through the Office for Harmonization in the Internal Market which is based in Alicante, Spain. Your trademark lawyer will be able to assist with this.
Outside of the EU: If you require trademark protection in a country which is not in the EU, you can apply to register your trademark in countries which have signed-up to an agreement, called the ‘The Madrid Protocol’. A good trademark lawyer will be able to assist you with this.
The Madrid Protocol is controlled by the World Intellectual Property Organisation (WIPO) which is based in Switzerland. Most countries have signed up to The Madrid Protocol however please see the list of member countries to check that an international application can cover the country you require.
You can only apply to register a single mark, as the international system does not allow for a series of marks, unlike in the UK.
It is not currently possible to obtain a single trademark registration which will apply all around the world.
Do I need a trademark lawyer?
A good trademark lawyer can prove to be invaluable in helping to protect your business and brand especially when beginning to trade overseas.
Although anyone can register a trademark, you may need the assistance of an experienced trademark attorney in order to do this, especially if you need to register the mark in more thank one country.
Your trademark lawyer will be able to advise you in relation to a variety of matters including:
- Researching new trade marks;
- Making checks to see if your trade mark is already in use in the UK and in other countries;
- Preventing and resolving trademark infringement;
- Registering trademarks in the UK, European Community and worldwide;
- Enforcing and defending trade mark rights and negotiating in trade mark disputes;
- Advising about countries in which your should seek registration and the most cost effective way of achieving this;
- Handling any renewal requirements (the timescales vary country to country).
If you need the assistance of an experienced trademark lawyer to protect your business either in the UK or overseas, contact Worldwide Lawyers on 01244 470 339 or at firstname.lastname@example.org.