Welcome to the world of trade marks!

If this is your first experience of trade marks, allow us to guide you through.

Whether you're a company or an individual trader, these are some of the issues you'll need to consider when you embark on protecting your trade mark for the first time.  Please give them some thought before you contact us; the answers will help us to give you the best possible advice.

What is your trade mark?

Many things can be trade marks - a word, a logo or other picture, distinctive product packaging or shape or colour, a slogan…  Try to identify all the different trade marks you might have, that distinguish your goods or services from those of your competitors.  Then think about exactly how you use those marks.  Do you use different colours or always the same ones?  Do you write your word mark in different, perhaps stylised, forms?  Do you use a main brand name with every specific product name?  Does your logo always appear with the other trade mark(s)?  Often several different forms of a trade mark can be protected together.  Take account of how you might want to use the marks in the future as well.

What products do you use it on?

Your trade mark will need to be protected for specific goods and/or services.  These should be the products for which you're currently using the mark, or for which you've a genuine intention to use it.  Think of all the goods and services you offer for sale, including ancillary services such as maintenance and support.  Also think about the products you might want to move into in the future under the same mark.

Have you used it yet?

Using a trade mark automatically builds up rights in it, even before it's registered.  Let us know whether you've used your trade mark before and if so on what products, in which areas of the country, in what form and to what extent.  This may affect how easily the mark can be registered.  Keep evidence of all your trade mark use (eg, copies of marketing literature, letterheads, sales invoices, brochures, etc.., all dated) in case we later need to prove the extent of use to help get your mark registered.

Also be aware how important it is to use your trade marks prominently, and to label them as trade marks whenever you do (use ™ at first; only use ® when a mark is properly registered).

How will you exploit your trade mark rights?

Will you use the mark yourself, or will you license others to use it instead of or as well as you?  If others are to be involved, how will you control the way they use the mark and the quality of the products they sell under it?  Continued, and controlled, use is vital to keep your trade mark rights intact.

Who owns it?

This needs to be right.  Did you devise the trade mark, or did somebody else do it for you?  If someone else was involved, are you sure you have all the rights in the mark, including the copyright in any logos or stylised wording or other associated designs?  We can advise on issues like this if you tell us the background to the mark.

Who do you want to own the trade mark registration?  - Generally this will need to be the person or company who is actually using the mark, but again we can advise on this.

Are you free to use the mark?

Is your trade mark similar to any of your competitors' marks, or to any well known brand names, in the field you're operating in?  If it is, you may have problems trying to register it.  Worse still, you might be sued for infringing someone else's trade mark rights.  We can advise on this type of situation.

If you're planning to adopt a new trade mark, we recommend a search for potential infringement risks from other people's marks.

Where do you want to protect your trade mark?

Which countries do you use, or intend to use, your trade mark in?  Each of these should have its own trade mark registration, especially those where you have licensees or distributors, or where you know of a major competitor.  Let us know how you plan to use the mark in each country – eg, in what form (this might differ between countries, for instance due to language or culture), on what products, whether yourself or through a third party, etc..

We can advise on the best strategy for protecting a mark internationally.  We can, for instance, apply for a Community trade mark registration which will cover the whole of the EC.

Obtaining protection in a number of countries will cost a lot more than just registering your mark in the UK.  Think about how you'll fund this, and when would be an appropriate time to do so.  Note too that infringement risks should be checked out for each country you plan to work in.

When you meet us...

…Anything you tell us will be kept strictly confidential, even if you don't continue with a trade mark application or you go to another trade mark attorney instead.

For new clients we usually ask for payment in advance for at least part of our charges.  You can read our business terms here – please check you're happy with them before you visit.