ICPA Analysis: Registering a trademark

Top marks

 

In the last issue Eugene Pienaar explained what a trademark is. Here he talks you through the process of registering one

 

A trademark is a sign that identifies the products or services of a business, and may consist of words, slogans, logos, shapes, numerals, colours or any combination of these. In essence, it is a badge of origin that allows customers to distinguish the goods or services of one trader from those of another.

There are, generally, two steps in the trademark process. Firstly, it is advisable to do a trademark search for two reasons:

• To ensure that by using the mark you will not be infringing on the trademark rights of another third party.

• To ascertain whether or not the mark is available for registration.

Once a search has been done the next step is to prepare and file an application. The following information is required: the trademark, the applicant’s name and address, and details of the goods and/or services in relation to which the mark will be used. The cost will depend on the number of classes in which it needs to be filed, which depends on the products and/or services in relation to which the trademark is used.

Trademarks are territorial and separate trademark applications will need to be filed in the different territories in which trademark protection is needed. A UK trademark registration will, for example, not give any protection in the EU or US. If EU protection is required the most commonly used system is the CTM (Community Trade Mark). In the UK the process takes about four months, provided there are no objections.

After the application is filed it will be examined on two levels. The first looks at inherent registrability of the trademark (is it sufficiently distinctive to qualify for registration?) and the second is a search for any conflicting (identical/similar) trademarks on the database. If the application is accepted it will be advertised for opposition purposes. This gives any interested third party an opportunity to oppose an application if they believe that it conflicts with a trademark that they may have rights to. If no oppositions are filed within a certain period the trademark registration certificate will be issued.

Trademark registrations last for 10 years and can be renewed at 10-year intervals. It is very important that a registered trademark is used as a failure to use a mark within five years from the date of registration could result in the mark being removed from the register by a third party on the basis of non-use.

Summary

Registering a brand name is one of the first and most important things to do. In fact, it should even be done before a company is registered and most certainly before a company starts trading. Many business owners don’t even know what a trademark is, let alone the importance of protecting one of the most important and potentially valuable assets of any business.

 Eugene Pienaar is Managing Director at RevoMark (see www.revomark.co.uk)

 

This article is taken from “Accounting Practice” the ICPA quarterly magazine. Dedicated to supporting and promoting the needs of the general practitioner. You can find us at  www.icpa.org.uk  or email info@icpa.org.uk  or by ‘phone on 0800-074-2896