What are they and what do they do?

• The words “trade mark” and “brand” are used interchangeably – although “trade mark” usually refers to a particular word or logo whereas “brand” is used more broadly to describe a business’s overall branding (a “brand” may include a number of “trade marks”). A trade mark is a word or logo which is used to distinguish your goods and services from those of others, indicating the goodwill and reputation of your company as well as the consumer recognition, trust and loyalty that your brand enjoys.

• A trade mark gives you the right to exclusive use of the mark in connection with the goods and services for which it is registered.

• Registration of a trade mark gives you the right to sue for infringement any person who uses an identical or similar mark in connection with identical or similar goods.

• A registered trade mark is also a valuable commercial asset that can be licensed or assigned to others and renewed indefinitely.

Clearance

• Consult an expert in trade mark law before choosing your trade mark as it is important to check that your trade mark is both protectable (not all words are protectable) and that your trade mark does not conflict with another business’s trade mark.

• Don’t commit to a new trade mark without a proper search to ensure your trade mark does not conflict with another business’s trade mark.

How can I apply to register my trade mark?

• Assuming no-one objects to your trade mark, it generally takes 6 months from filing the application until the registration of the trade mark is granted.

• Trade marks can be filed nationally in relevant EU Member States. Alternatively, it is possible to file a single EU-wide Community Trade Mark (CTM). A CTM is incredibly efficient and cost effective as it offers protection across all 28 EU Member States through a single application. The cost of filing a CTM is similar to the cost of filing 3 national applications.

• Trade mark applications are examined by the trade mark registry to ensure the application meets the relevant legal requirements. Most importantly, the trade mark registry will ensure that your trade mark is sufficiently distinctive. Terms that are descriptive are not registrable, nor are terms or expressions that are not distinctive. To be an effective trade mark, the trade mark should be eye catching and memorable and capable of distinguishing your goods or services from those of your competitors. Once your trade mark application is accepted by the trade marks registry, there will be a period of time (the “opposition period”) during which any business that objects to the application (generally because the application is too similar to earlier trade marks) can file an opposition. An opposition is like a mini-litigation and will be determined by the trade mark registry. Opposition proceedings usually last about 12 to 18 months.

• In the EU, there is no requirement for you to prove that the trade mark is, or will be, used for the goods and services covered by the trade mark at the time of filing – it is therefore possible to file for a broad range of goods and services which helps prevent the need to file new applications as your business grows and evolves. However, once the mark has been registered for 5 years, third parties can apply to revoke your mark if it has not been used and you will need to be able to prove use of your mark to rely on it in infringement or opposition proceedings.

Practical tips for your trade mark policy

• Protect your brand in all relevant countries;

• have a well-thought out plan for policing your brand, enforcing your rights as appropriate; and

• ensure your trade mark protection keeps up with your growing and evolving business.