05 June 2015
The importance of trade marks for your small business
At the British Library’s Business & IP Centre we regularly work with start-up and growth businesses with a focus on all things design. I recently attended ‘I Knit Fandango' at the Royal Horticultural Halls, Westminster, London, which is a huge knitting festival and market bursting with lots of beautiful yarns, fabulous fibre and amazing patterns. The vast majority of the exhibitors were small businesses. Most produced the yarn and designed the patterns they sold themselves.
I enjoyed talking to the exhibitors about knitting, a great passion of mine, and about their use of social media and intellectual property for their small businesses. However, I was surprised at the number of exhibitors who didn’t think intellectual property was relevant to them.
Intellectual Property, or IP, relates to creations of the mind such as inventions, music, poetry, paintings, books and designs etc., as well as the signs and symbols used by businesses to indicate the origin of their goods or services.
On a basic level, having a trade mark allows your customers to find you. Whether they are using the internet or social media or just walking the high street they can quickly identify who they are dealing with when looking for particular products or services. Having your trade mark on your website and any social media channels will allow customers to recognise and identify your brand with your products. As the reputation of your business grows so will the value of your trade mark.
Choosing a trade mark
How do you choose a trade mark? Well, that is very much a personal choice, but it is worth remembering that trade marks don’t have to be complicated. Take the image below:
It is instantly recognisable as the Nike tick or swoosh and is also recognisable regardless of the country the product is sold in; no words are necessary.
As rumour has it, the word ‘Kodak’ was devised by George Eastman and his mother mainly because the letter ‘K’ was Eastman’s favourite letter. Coined words, as they are known, have the advantage of being easy to protect due to their distinctiveness, but they may also need greater efforts to imprint them on the minds of consumers.
Creating a trade mark is no easy task and it is not helped by the fact that there are really no hard and fast rules as to what makes a successful trade mark. However there are some things you should bear in mind:
- Firstly, your trade mark has to meet all the legal requirements for trade mark registration in whatever jurisdiction you are intending to register it in.
- Secondly, your trade mark must be distinctive enough to be protectable and registrable with the relevant intellectual property office.
If you are using a text mark you might want to remember the following;
- Your trade mark should be easy to read and pronounce in all languages relevant to your market.
- Your trade mark should not have any adverse meaning in slang (in English or any other foreign language if you intend to trade abroad).
- Your trade mark should not create any confusion as to the nature of your product.
You can work with freelance designers or design companies to create your trade mark, but you need to ensure that all the intellectual property rights to the trade mark are assigned to you as otherwise they will remain with the person/company who created the mark, regardless of whether or not you paid for the service.
Register your trade mark
Once your trade mark is designed you will need to register it. I should say here that you don’t have to register your trade mark but having a registered mark gives you the right to sue anyone who infringes it and to prevent competitors from using/registering an identical or confusingly similar mark. For an unregistered trade mark you would have to rely on the common law of ‘passing off’ for protection and that can prove extremely difficult.
Registering a UK trade mark costs a minimum of £170 if you register online or £200 if you register on paper. Fees are not refundable and do not guarantee registration of your trade mark, so before you register you might want to:
1. Search to see if the trade mark you want to use is already in use
Although it is not requirement to filing an application, in the Business & IP Centre we would encourage you to search the free trade mark databases to see if any marks have already been registered that are similar to your mark. A list of the free search databases can be found and accessed via our website.
If someone else is using a similar trade mark to yours check whether it is being used in the same class of goods or services as yours. There are 45 classes of goods and services and it is possible for proprietors to have the same trade mark, provided they have registered their mark in different classes. An example would be “Polo” mints and “Polo” the Volkswagen car.
2. Think about it long term
Think about where you want your business to be in twelve months or in five years’ time. A trade mark lasts for ten years, and can be renewed every 10 years, so actually has the potential to last forever. When registering your mark you should take this into account, and include in your registration, all the classes that you intend to trade in within the following five years. Why five years if the trade mark lasts for ten? Well, if you do not start trading in all of the classes in which your mark is registered within five years of registration, opponents can apply to the Intellectual Property Office to have your trade mark revoked in the unused classes.
3. Don’t do it alone
Understanding how to protect your intellectual property can sometimes be a minefield. However, there are ways you can access free or low cost assistance to guide you through the process. If you need some help searching databases to see if your logo or a similar one already exists then come to the Business & IP Centre where our Information Specialists will be more than happy to guide you through the free trade mark search databases. We also offer a number of intellectual property and business workshops. Including:
- A Beginners Guide to IP
- Introduction to Trade Mark Searching
- Introducing Social Media for Small Businesses
For advice regarding the fees or the process of registration your should contact the Intellectual Property Office or for legal advice book yourself a free 30-minute advice session with a trade mark attorney in your local area via the Institute of Trade Mark Attorneys website.
Is it worth it?
Many of the exhibitors I spoke with at ‘I Knit Fandango’ hadn’t thought of protecting their brands and one exhibitor even asked “Is it worth it?”. It is worth remembering that your trade mark or brand will be the most valuable piece of intellectual property you will have. This is because we, as consumers, buy into brands as these assure us of a certain level of quality or of service. When we find a brand we like we tend to stay loyal to it and it is the goodwill a company builds up under its brand that gives it its value.
At the Business & IP Centre we regularly help those who have unknowingly infringed another’s trade mark or who have had their trade marks stolen or used incorrectly. In order to protect your company’s identity – protect your trade mark from the start.
Maria Lampert, Information Expert at the British Library
Maria has worked in the field of intellectual property since she joined the British Library in January 1993. She is currently the British Library Business & IP Centre’s Intellectual Property Expert, where she delivers 1-2-1 business and IP advice clinics, as well as intellectual property workshops and webinars on regular basis.