What is a trademark and do I need to register mine?

Got questions about trademarks? Experienced trademark lawyer Lindsay Gledhill is here to help. In this ultimate guide, she explains what you need to know about registering a trademark in the UK and internationally. Plus, she gives her top expert tips gained from almost 30 years experience. Scroll down to read her article and watch the interview for more insights.

What is a trademark?

Do you really need to register a trademark?

Do you have to register it?  No. You get some protection just by cracking on and trading under the name. This builds ‘goodwill’ and is protected under the legal principle of ‘passing off’. It remains a really important weapon for knocking out trademarks that shouldn’t be registered. But registration strengthens your rights. Let’s break it down:

So why register it? Registration strengthens your rights. Let’s break it down into offensive and defensive.

Offensive reason:

• You gain the power to stop others from using identical or similar names.

Defensive reason:

• You avoid the risk of someone else registering your name and forcing you to rebrand.

 Imagine:

• Anthony thinks of ‘SeedLegals’
• Anthony builds the website
• Anthony launches SeedLegals
• Someone else registers ‘SeedLegals’ before Anthony does

 In theory, they could have forced a rebrand. Registering early avoids that risk.

Any reasons not to register?

Yes. Trademarks are a double-edged sword. Applying means the trademark office notifies potential objectors. For example if you’ve been trading without complaint with a business that includes the word “Easy” my strong advice is NOT to apply to register it because the chances that easyJet will take a pop at you are 99%. 

So if there’s any uneasy coexistence with competitors, you’ll need a strategy first.

When’s the right time to apply?

•  If you’re consumer-facing or sell online: from day 1.
•  If you’re B2B, infrastructure-based or rely on face-to-face sales: it’s less urgent.

Does a trademark protect only the exact name?

No – it also covers similar names based on:

• How they look (visual similarity)
• How they sound (phonetic similarity)
• What they mean (conceptual similarity)

For example:

•  ‘Seedy Legals’ could confuse people because it sounds like ‘SeedLegals’.
•  ‘C’d Legals’ could also be an issue based on pronunciation.
•  Even ‘Kernel Legals’ might be too close, because ‘kernels’ are related to seeds.

 How do I register a trademark?

Start by understanding trademark categories. Some key tips:

•  Use the UK Government’s free classification tool. Like HMRC, they won’t give you a strategy but they will help you not make common mistakes.  
• Don’t register for ‘advertising’ unless you sell advertising. People often register for “advertising” because they advertise but actually “advertising” means that people buy advertising from you.
•  Consider whether ‘retail services’ apply – it’s a crowded category and often triggers objections.

Name or logo – what do I register?

Another strategic reason to go just logo is if your sensitive competitor is likely to get upset about your name but they won’t be as bothered about the logo. It means you still get to use the (R) symbol next to the logo.

What are the hurdles?

What happens after you apply? Does it go straight on the register?

No, there are two hurdles to overcome:

1. The Government reviews whether your trademark is descriptive or too generic.

For my name, “InHouse IP”, when I applied to trade mark it I wondered whether the Government official might turn me down on the basis that it’s a bit too close to describing what I do which is something they don’t like.

You can use the UKIPO free website to eliminate some of the more unusual risks – for instance, if your logo has got a crown in it or rings in it, you can do a dummy application to see whether these will be turned down for weird-and-wonderful historical reasons like being too close to royal emblems or the Olympic symbols. 

2. After approval, your application is published and third parties can oppose it.

Hurdle 2 happens if you pass Hurdle 1 and that’s after the government publishes the application. Someone else may jump in and object. The main objection is that it’s too similar to their earlier registered trademark or that they’ve been using the name for a long time so if you used it too it would be “passing off”. Now you’ve got some decisions to make because you’ve entered into a dispute resolution process.

 So, can I trademark “Apple guitars”?  That falls under Hurdle 2, because famous companies get extra rights. Apple the tech company doesn’t sell guitars. But they could fall back on some wider rights to stop people “riding on their coat-tails”.  It’s not just confusion risk, though confusion risk is the one we usually see.

How do people object? 

They file an opposition, in fairly standard form. It usually says that your mark looks like, sounds like and/or means something similar to their earlier mark/name. They might throw in some objections about riding on coat-tails or it bringing them into disrepute. 

How do I reduce the risk of people objecting? 

Do a dummy application and Google search beforehand. The UKIPO and EUIPO have tools that show who will be notified of your application.

There are also commercial search services you can get and if you go to an experienced lawyer we can often help you rule out the names that are just asking for trouble – like “Easy IP”.

The dispute resolution processes usually end amicably. Either the two parties adjust their goods and services, or each of them agree not to use their marks in each other’s market. 

The hardest agreements to risk is if one party makes horse-shoes and the other party makes software that could be used for horse-shoes. Those agreements get long!

Getting a trade mark on the register isn’t the end of the story. If “Seedy Legals” got on the register we’d object on the basis of “passing off” and also we’d say that was filed in bad faith especially if it was for EIS tax relief help. So we’d knock it off the register for you. 

Once you’re on the register you’ll get regular notifications asking if you want to object to later marks. Your strategy here will be determined by whether they compete and how emotional everyone is.  Often a businesslike or personal  approach works best, but maybe have a lawyer behind the scenes ghost-writing it unless you’ve done this quite a few times before. 

What happens if someone objects?

You’ll enter a resolution process. Most disputes are settled by agreeing on usage boundaries. You can object to others later using your registered mark too — especially if they filed in bad faith.

What about international trademarks?

What I usually do in that situation is have my opposite number check out the US register first before we apply in the UK. But don’t file in the US first – it’s nearly always best to apply in the UK first having done that US clearance. This is because in the US they have four hurdles, not two, and “foreign filed” marks get to jump over those other hurdles. At least for the first 5 years which is all you need.

You also need to think US-first for the language. There are some trivial issues like courgette versus zucchini or not using commas in the specifications – but these can have knock-on consequence in the US registry which is not where you want there to be trouble. So make the language US-friendly from the outset.

I’d also think “international first” when you’re deciding on how many classes to file in. Here in the UK it’s only an extra £50 per class so it’s tempting to file 6 or 7 classes. But if you transfer that across to extending the filing to the US, EU and Australia and Canada and you’re talking about many thousands of pounds. In some countries like India you’ll be strongly advised to file a separate mark per class. And China has a unique system of sub-classes.

 So I’d rather see a UK client stick to 2 or 3 classes then extend all those abroad. You don’t want someone jumping in and registering the classes you didn’t extend, and nowadays there are bots crawling the registers with a view to doing exactly that. 

So the international spend begins sooner than you think. Don’t overdo it in the cheap jurisdictions like the UK because you could be getting £10,000 bills within the year if you’re not careful.

Can I do it myself, or do I need a lawyer?

If your mark is straightforward, you can DIY with the UKIPO tools. But if it’s descriptive or overlaps with other brands, get legal advice. Also, international filings usually require local representatives.

You can’t DIY in the EU or the US unless you’ve got an office there. I can point you to the less expensive lawyers there. In the US, the costs decline the further you get from the coasts, so I tend to use lawyers in the Mid-West.

I’ve received a cease and desist letter – what should I do?

Never admit any wrongdoing. You might choose to rebrand, but frame it as a strategic decision. A lawyer can advise on your options.

Need advice?

I’d love to help. Visit inhouseip.co.uk or email [email protected]. SeedLegals customers get a half-price strategy session for DIY filings.