1. CHOOSING THE RIGHT REGISTERED TRADE MARK FOR YOU
There are, generally speaking, no right or wrong registered trade mark. There are some that will not be allowed without the consent of the owner (the Olympic symbol, certain royal ciphers etc.).
What you need to obtain from registration is protection for your trade mark so that your registered trade mark can stand out from the rest of the trade marks in your sector.
However, there are advantages to the choice of one name over another. Generally, the more descriptive a name or mark is of the goods and/or services to which it is to be applied the less marketing and education of the consumer needs to be done but the more difficult it may be to register the trade mark. However, the cost of choosing a less descriptive trade mark is that marketing effort will need to be expended on educating the customer that this trade mark, in particular, identifies goods as coming from one particular enterprise.
Once the potential names have been chosen, a search of the UK trade mark register will identify identical marks that are already registered or pending. This type of search is sometimes called a “knock-out” search. It helps “knock-out” marks for which there are immediate and obvious obstacles to your use or registration so you can decide whether to go on to the next level of search for that mark or choose a new one.
Once a mark has passed the “knock out” screening search, we usually recommend the second level search – a comprehensive search.
2. A COMPREHENSIVE SEARCH
The next stage is to organise a comprehensive search which identifies identical and confusingly similar to earlier registered trade marks. Such a search should identify potential obstacles to registering the trade mark.
3. THE ADVANTAGES OF REGISTRATION
After selecting your trade mark for use, it is important to protect the mark by registering it. There are several practical business advantages of registration and also several important legal advantages. One of the business advantages is that trade mark registrations can be used as negotiating tools in business deals. They facilitate licensing, franchising and transfer of ownership. That said, without a registration proving the existence and ownership of the mark, a lawyer (acting on behalf of the other party) would be hard pressed to recommend to his client that any transaction to purchase that mark should proceed.
Another important business advantage of trade mark registration is that it can actually increase the value of a business for potential investors, lenders, public offerings, etc. This is because registration renders a company’s trade marks as “quantifiable” assets of the business. A registration enables the owner to show, as part of the value of his business, the goodwill resulting from advertising and promotional expenditures. Accountants have formulae they use to quantify the goodwill of a trade mark resulting from its use and promotion. Thus, expenses associated with advertising and promoting a mark translate not only into increased sales, but also into increased worth of the company – all for the minimal investment in the cost of filing a trade mark application and obtaining a registration.
Furthermore, a registered trade mark can serve as security for financial transactions. They are recognised by banks as security interests and may be mortgaged or secured.
The legal benefits of registration are substantial. Registration provides “prima facie” evidence of ownership and the exclusive right to use the registered trade mark throughout the United Kingdom . The registration allows the company to pursue infringers in the courts. This puts the registrant in the strongest position by placing a heavy burden on the other party to overcome this presumption. This presumption is not offered to owners of unregistered marks.
A registration also expands the geographic scope of protection of trade mark right. Without a UK registration, trade mark rights extend only to the geographical area in which a company has established a market presence by making sufficient sales under the mark. A UK registration provides a presumption of exclusive rights throughout the entire United Kingdom . The same principle applies to European or US trade marks.