World IP Day 2021 – why registering a trade mark is a great investment for SMEs
Great businesses are built on great ideas. The world is full of small and growing companies with big ambitions that contribute a huge amount to the economic and creative life of their country. Such is the extent of the value generated by SMEs that they are frequently termed the “engine” of national growth. For these organisations, building a brand their customers can trust and protecting their ideas from unauthorised use are incredibly important.
This World IP Day the industry is looking at the topic of intellectual property management and how small and medium sized businesses can benefit from being proactive about protecting their IP. One of the most valuable and cost-effective ways to do this is by applying to register a trade mark on behalf of the business. Here we take a look at the basics of trade marks and trade mark management.
What is a trade mark?
A trade mark is a recognisable and distinctive element added to your goods or services that clearly identifies that they have been created by your business. They are shorthand for your customers, telling them that, when they buy this product or service, they can expect to receive an item of the quality associated with your business’ reputation. A trade mark creates a connection in customers’ minds which, when properly nurtured, can grow into a strong and very valuable brand. A trade mark is typically a word or logo, but it is also possible to register shapes, patterns, sounds and colours.
What protection does a registered trade mark give my business?
When you successfully register a trade mark, you have the exclusive right to use and authorise others to use that mark on your products and services. This means that no one else can use it and benefit from the hard work you have done to establish your reputation. It can prevent others from registering similar-looking or sounding trade marks for the same goods and/or services as you offer, which might confuse consumers about which company they are buying from.
When should I apply to register my business’s trade mark?
In the early days of a business, it can be difficult to keep on top of everything you need to do, but it is a good idea to register your trade mark sooner rather than later. It is relatively inexpensive (£170 in official fees for a standard application covering one class of goods or services in the UK, for example) and means that all the work you do to build your brand is protected. Going through the trade mark registration process can also prevent you from making costly mistakes, such as developing a logo that is too similar to a trade mark that is already registered in the same industry.
Do I need professional help to apply for my trade mark?
It is possible for any business owner to register a trade mark in their own country. However, to ensure a smooth application process and minimise the chance that your application is rejected, it is well worth appointing a qualified trade mark attorney to handle the process.
Trade mark attorneys can advise on the likelihood that your chosen trade mark will succeed in being registered, evaluating factors such as its distinctiveness and ability to function as a trade mark. They can conduct clearance searches to make sure the trade mark you want to register is not too similar to others in the same or related classes, which could result in it being opposed by the owner of that mark, and they can help you decide which classes you should register your mark in.
Ultimately, it is well worth investing in professional advice when registering your trade mark as it will give you a much better chance of getting it right first time, and saving you money in the process.
How can I make sure that no one infringes my trade mark?
Once your trade mark is registered it belongs to you and no one else can use it. That means that if you find someone else using it, you are able to sue them for infringement on the basis of your registered rights.
You can also oppose any attempt by a third party to register a trade mark that is similar to yours in the classes where you hold a registration and possibly in related classes.
In the case of both infringement and monitoring for opposition it is best to use the services of a trade mark attorney. Most offer watching services where they will monitor published trade mark applications and check for marks that look or sound the same as your registered mark, then advise you on how to oppose them.
How long will my trade mark last and what happens when it runs out?
A trade mark is typically valid for ten years before it must be renewed or it will expire. That means it is important to keep track of the trade mark and make sure you meet the deadlines for filing your renewal. This is straightforward, but, as your business grows, you may wish to register different marks for different products and services, at which point things become more complex.
In this case it is worth exploring how a trade mark management system can help by automating the tracking of relevant deadlines and prompting you when you need to act to renew your intellectual property rights. Investing in trade mark management software is not cost-prohibitive – WebTMS, for example, offers a tiered pricing system depending on the number of records you need to manage, so it is as efficient for an SME as it is for a global brand.
The potential value of your trade mark as a corporate asset is such that the risk of losing it should be guarded against. SMEs that are not yet at the stage of employing an in-house brand management team should seriously consider appointing a qualified professional. As experienced trade mark attorney Rachael Ward puts it: “If businesses want to get ahead of their competitors, they would be wise to engage expert Chartered Trade Mark Attorneys to manage their IP portfolios for them on a reputable database, to ensure no deadlines are missed. A decent records system is the backbone of every good trade mark attorney practice. Such matters should not be noted on spreadsheets!”
For SMEs, registering a trade mark and managing it well is sound business sense. It is the cornerstone of building a strong brand and opens up the future for activities such as diversification.
A trade mark ensures that the hard work that goes into building a good reputation cannot be undermined by others, and helps protect SMEs as they continue generating the ideas that power economies and innovation worldwide.
The above article is for information only and does not constitute legal advice. For advice on trade mark applications we strongly recommend that you seek professional support. In the UK, you can find a list of Chartered Trade Mark Attorneys at www.citma.org.uk. The USPTO has guidance on finding a qualified attorney here.