Legal Talk 7: What Are Trade Marks?
I'm gazing out of the window watching hordes of people clamber around Holborn station. I check my phone. You've messaged me. You are with some marketing people and they are on about branding, logos and trade marks.
You say, “Hey Legal Coach, can you just give me a few bullet points on trade marks? It would really help.”
Okay, here goes:
Firstly, to get some really good info about applying for a trade mark go to the www.ipo.gov.uk website. You can apply for a trade mark online at this website; it's actually quite easy. Normally you would go to a lawyer or trade mark agent to apply for trade marks for you, but if you are pressed into doing this on the cheap and can't afford to pay someone, then here are some tips:
1. You can only apply for a trade mark if it is NOT generic. What I mean is that you can't apply for the trade mark ‘bananas’ for a business that sells bananas. Otherwise, if you were to get this trade mark registered then no one could use the word ‘bananas’ when selling bananas, without your consent.
2. You need to think of a word that is quite novel or new that no one really uses for your kind of service or goods. Famous examples that other people have applied for and registered include: Orange (for phones), SONY (made up word registered for electronic goods), KODAK (for film), Skype (made up word) and Monsoon (for clothes).
3. If you think of a logo then this is likely to not be generic because it is not likely that anyone else out there regularly uses your new logo in ordinary day to day activities and conversation.
4. Note that there is something called the Nice classification, which is a list of 45 categories (or classes). You can choose to register your trade mark in your chosen categories. For example, class 9 is for electronic goods, class 16 is for paper goods, class 28 is for toys and so on. Classes 1-34 are for goods, and classes 34-45 are for services. You could register your brand in lots of classes but the more classes you register it in, the more it will cost you. So, you have to be discriminating as to which classes you want your trade mark to be classified by.
5. Normally, trade mark fees are a few hundred pounds to apply for. If the Trade Mark Office think your brand is generally OK (i.e. you are not trying to register the word ‘bananas’ for your business that sells bananas) then it will publish your application, leaving it open for others to oppose your application, if they like. If no one opposes your application then it should be registered in the UK in around 4 - 6 months, typically. However, once it is registered, it then becomes effective from the date you first applied for it.
Does this all make sense? I sure hope so. For further information from a source I thought was great, check this out: https://www.bl.uk/business-and-ip-centre/articles/what-is-a-trade-mark.
Your Legal Coach
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