Why you shouldn’t file your own trade mark application

Why you shouldn’t file your own trade mark application


A registered trade mark is widely understood to be a valuable business asset. However, the process of obtaining that registration is not always as straightforward as it might seem.

This article identifies some of the pitfalls that await the unwary or inexperienced applicant.

The UKIPO offers excellent support to trade mark owners who want to file their own applications, and the application form guides you through the process, prompting for the required information such as a representation of the trade mark, and a list of the goods and services. Where, then, do the problems lie?

Who owns the trade mark?

It isn’t unusual to commission a designer to create your new brand, but the ownership of the rights in the creation is often overlooked. The default position is that the creator of the work owns the copyright, so as a very first step it is crucial for the commissioning agreement to incorporate a full transfer of the copyright in any logos or other relevant work, to make sure that whoever will be using the trade mark has the right to do so.

Related to this is the question of whose name the new application should be filed in: should the company own it, or maybe the founder of the company? The answer will depend on the circumstances.

What should you register?

It sounds like a question with an easy answer: register what you use. But the reality isn’t that straightforward. The protection conferred by registration is for the trade mark on the application form. The only circumstance in which protection is appreciably broader than this is in the case of a simple word mark, shown on the trade mark application form in a plain font, with no stylisation or other visual embellishment. Such simple word mark registrations are considered to protect that word irrespective of the style in which it is written and they are, as such, relatively broad in scope.

But what should you do when your trade mark is used in a particular style, or you use a range of colours, or maybe the trade mark includes both text and images? Perhaps it includes some descriptive text that needn’t - or shouldn’t - be part of a registered trade mark. What if it’s a slogan or a strapline? How do you decide which bits to include and which bits to exclude? While there is an argument in favour of registering exactly what you use, it is not always the best option, and including everything can be a limiting factor.

As Trade Mark Attorneys, we will advise on the registrability of your chosen trade mark, or sometimes its unregistrability, and guide you towards protecting the most appropriate versions of your trade marks, taking into consideration relevant factors such as budget, timescale and business plans. Taking expert advice at an early stage of brand development reduces the risk of wasting time and money trying to register unprotectable marks, or registering less-than-optimal trade marks.

What use is a series application?

The UK is one of several countries that will accept a so-called series application. In the UK, this means that up to six variants of a trade mark can be included in the same application, with only a modest increase in fees. This sounds great, but is it worth it?

The answer is that it depends on the circumstances. Mostly, it isn’t worth it, as the variants must be so similar to each another to be accepted as a series that, more often than not, any one of the variants would provide sufficient protection for them all. Where series marks can work is where a trade mark is used in multiple colour combinations, and where the colours are an integral part of the trade mark. Certainly there is little to be gained by, for example, including a word mark in both upper and lower case, or where words are arranged vertically or horizontally.

The goods and services

The list of goods and services – the ‘specification’ – is crucial to the application. Not only should the specification cover everything that you’re doing, but it should also cover things you intend to do, as well as things you might realistically do. The UK, like many countries, uses a standard international classification system, whereby all goods and services fall into one of 45 classes. However, interpretation and practice change over time, meaning that what might have once been acceptable, or understood to have a particular meaning, may no longer be so. This alone can cause confusion and errors when preparing the specification.

The wording of the specification is fundamental to determining the scope of protection. Once a trade mark application has been filed, nothing can be added, so it is important to get it right. We frequently see applications filed without professional advice that omit key products or services or, even worse, cover the wrong things altogether. A drinks company that has registered its trade mark for alcohol (the chemical) rather than alcoholic drinks is a particularly painful example, but less obvious mistakes can be equally disruptive. Such mistakes often don’t become apparent until a dispute arises, at which point it is generally too late.

Futureproofing your protection

It is relatively inexpensive to register a trade mark, particularly bearing in mind that the monopoly granted by registration can last indefinitely. A registered trade mark will, however, become vulnerable to cancellation if it isn’t used, not only in the format in which it is registered, but also in connection with the goods or services covered by the registration. A well thought through trade mark application will help futureproof the registered right, and maximise its useful lifespan.

Minimise the risk of challenge, but maximise enforceability

The trade mark registration system is superficially easy to use and, provided the chosen trade mark satisfies the legal requirements for registration, most applicants will manage to obtain a registration of some kind. However, in the face of a challenge by a third party, many rights owners must face the unwelcome reality that what they have registered either isn’t what they need, or has gone so close to existing trade mark rights that they are at risk of an infringement claim. Similarly, if someone comes too close to what you’re doing, you need to be able to stop them, but if your registered trade mark doesn’t cover the right goods or services, you probably can’t.

Taking professional advice at the start of your trade mark journey will help identify and manage any risks represented by third party rights, and reduce the likelihood of challenges. In the event that you need to defend your trade mark use or enforce your trade mark rights, a Trade Mark Attorney will guide you through the process, often managing to resolve the dispute by correspondence alone, in a cost-effective and efficient way that avoids more formal proceedings.

Take proper advice from a Chartered Trade Mark Attorney!

While it can be tempting to go it alone, it can be a false economy, and it can be more expensive for a Trade Mark Attorney to sort out a trade mark application that has run into difficulties than for them to have dealt with the application from the start. This is as true for a cash-poor start-up looking to file their first trade mark application as it is for an established business with a large budget for international protection: if the basics are wrong, the registration has no value.

Seeking professional advice at the start gives you the best chance of avoiding pitfalls, and of obtaining registered trade mark rights that accurately reflect your business. Our experienced trade mark team is able to advise on all aspects of trade marks, including trade mark availability and registrability, filing strategy, defending and enforcing trade mark rights, and all aspects of portfolio management, both domestically and internationally. Please contact us for more information.

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