How To Protect Your Logo

Karen Hensman, of Innovate IP (www.innovateip.co.uk), tells us how to secure the cornerstone of your identity

Why do you need to protect your logo?

Before I start to talk about how to protect your logo I thought it would be worth spending some time addressing why you need to protect it.

Ask yourself: how valuable is your product or service brand to you? If it is worth selling, it is worth stealing, and it CAN happen to you. A trademark registration is a little like an insurance policy which will help you if you are unlucky enough to be copied by a third party. It will help you stop such a third party without the need for lengthy, expensive legal battles.

As an aside, if your mark is highly creative it may qualify for copyright protection in the UK. However, this will only protect you if you can demonstrate that there has been copying, that you own the logo to start with and that your logo predates the copy.

If your logo is valuable to you, I strongly recommend that you consider registering it as a trade mark.

What is registrable as a trade mark?

Trade marks can take many forms: logos, words, 3D shapes, colours… in fact anything that can be represented graphically.  In order to be registerable, your mark has to be distinctive and not descriptive of the type of product or service that you offer. For example, the mark SOAP would not be registerable for soap or toiletries, because members of the public need to use the word SOAP to describe the product. It is not fair for one company to have a monopoly right on a normal dictionary word which is essential to describe the product or service itself.

The only exception to this is when the mark is highly visually distinctive. For example, if you were to use the name SOAP with a dominant and eye-catching logo, so that the most distinctive element is the look of the logo itself and not the word, this would be allowed. You would not be able to stop anyone using the name SOAP, but you would be able to stop anyone using a similar visual logo.

Searching, do you need to do it?

Before deciding on a mark, you need to check that it has not been registered by another party – you do not want to end up infringing their registered trade mark rights. There are three types of trade mark valid here in the UK, and all three types need to be checked.

Firstly, you need to check the UK Trade Mark Register, which you can do online at the UK Intellectual Property Office website (www.ipo.gov.uk). Secondly, you need to check the Community Trade Mark Register (CTM), which you can do online at the Office for Harmonisation of the Internal Market website (http://www.oami.europa.eu)

Finally, you need to check the International Trade Mark Register, any international mark which designates UK or EM (European Union) as a country is valid here in the UK, and can prevent you from registering your mark. You can check this at the World Intellectual Property Office website (www.wipo.int).

When you are doing your searching you should check misspellings and phonetic equivalents, as well as plurals. I would also check any hyphenated or otherwise adapted marks, because a trademark registration can be used to prevent registration of a similar or identical mark.

Use an attorney, or to do it yourself?

I get asked this question a lot, and it is a difficult one to answer. You can, of course, register your trademarks yourself online. If you have a very distinctive mark, and you have carried out all of the appropriate searches, and found nothing of concern then go ahead – you should be ok.

One word of warning: this is a legal process, and if you start the process and hit a problem it may cost you more in the long run than if you had sought advice from an attorney in the first place. This is particularly true if you are filing a community trademark.

At the very least, I would consider consulting a trademark attorney before filing any application yourself, most will offer you a free consultation. If you need to find a trademark attorney in the UK, make sure they are listed by the profession’s specialist trade body (www.itma.org.uk).

The essentials

Once you have decided on a mark, you have done some searching and you have decided whether you are going to start the process yourself or use an attorney, you are ready to file your application.

The next step is to decide how widely you want to protect. Are you just looking at the UK, or do you need protection in wider Europe? Only you will know what is right for your business. A community trademark is around 2.5 times the price of a UK mark, and the registration process takes between 9 and 12 months, as opposed to 4-5 months for a British equivalent. However, you get protection in all 27 countries of the EU.

Trademarks are registered by class, so you will need to classify the goods and services on which you are going to use the mark. There are 45 classes and a good classification guide can be found on the UK Intellectual Property Office website (www.ipo.gov.uk).

You should consider the name you wish to show as the owner of the trademark, always keeping in mind that a trademark is a type of property. If you are a limited company, and register your mark in the name of the company, it would transfer to the new owner as an asset of the business if and when you sell up. The owner of the trade mark must be a legal entity.

Summary

Most of the work you need to do will go into deciding what you are going to protect and how distinctive your mark should be, carrying out some searching and then making the choice as to whether you are going to seek external help. Whatever you decide, enjoy the process and know that, at the end, you will have the protection you need should a third party copy you.