Deciding whether to register a trade mark for your business name, logo, or both is an important step in protecting your brand. But how do you choose the right option for your business, and what are the advantages and disadvantages of each approach?
In this article, Ben Evans, Head of Trade Marks at Harper James, explores the benefits of registering a trade mark, explains when it’s better to register your business name, logo or both and outlines the key steps involved in securing trade mark protection in the UK.
What are the benefits of trade mark registration?
Registering a trade mark is one of the simplest and most effective ways to secure exclusive rights to your brand name or logo. Once your trade mark is registered, you have the legal right to stop others from using the same or a confusingly similar mark for the same types of goods and services in the country where your mark is registered.
It also makes enforcing your rights much easier. Trade mark infringement is simpler to prove when your mark is registered than when you are relying on unregistered rights, which require evidence of goodwill and reputation.
Once registered, you can start using the ® symbol, putting others on notice that you legally own the trade mark. A registered trade mark also becomes a valuable asset in its own right. For example, you can license or sell it or use the trade mark as collateral for a loan.
Is it better to trade mark a business name or logo?
This depends on how your business uses its brand. Consider whether your customers recognise your business primarily by its name in text or through a distinctive logo. If your brand is mainly encountered as a word, spoken, written or online, a word mark usually provides the broadest protection. It allows you to use the name in any style or font while maintaining legal protection.
A logo mark protects the exact visual presentation of your logo. It can include wording or be purely used as an image. Protection only extends to the specific design you have registered, so if the logo is altered in a noticeable way in future, a new application will be needed.
There are cases where registering a logo mark is more appropriate. For example, if your chosen business name is descriptive or lacks distinctiveness, combining it with a distinctive image can help secure registration. A name like “Eat More Cheese” would be too descriptive on its own for cheese products but might be acceptable as part of a striking combined logo.
If your business sometimes uses the logo without wording, it may be wise to register the logo separately from the name. While word marks are generally recommended for broader protection, the right approach will depend on how your brand appears in practice.
Do you have the budget to trade mark a logo and business name?
Ideally, you would register a trade mark for your business name and your logo. This offers the strongest protection for each brand element.
If you do not have the budget to register both trade marks at the same time, a phased approach works well. You could start with the word mark or logo (whichever holds more commercial value or is most widely used) and then file additional applications later as your business grows.
How do I register a trade mark in the UK?
UK trade marks are registered through the UK Intellectual Property Office (UKIPO), which manages the official Register of Trade Marks. This is a public, searchable database showing registered trade marks, their owners, and the goods and services they cover.
Trade marks must be registered in the correct “Class” or classes, according to the NICE international classification system. You will need to carefully list the goods and services your business offers in each class. This requires precise wording to meet UKIPO requirements. Poorly drafted or incomplete class lists can lead to delays or refusals.
You also have the option of a ‘Right Start’ application, where you pay half the fee initially and receive a preliminary assessment. You can then decide whether to pay the remainder and proceed or withdraw without paying the second half. This can be helpful if you’re unsure whether your mark is distinctive enough.
After you file your application, a UKIPO examiner reviews it for compliance. They will check that the mark is distinctive, not purely descriptive, and free from other restrictions (such as offensive wording or misleading claims). The examiner will also check that your goods and services are correctly classified. You will usually receive an Examination Report within four weeks. This will confirm whether your application is acceptable or whether amendments are needed.
What happens after your application is examined?
If your application passes the examination, it will be published in the UK Trade Marks Journal for two months. During this time, other businesses can object if they believe your trade mark conflicts with their existing rights.
If no objections are raised or you resolve any that are, your trade mark will proceed to registration, and you’ll receive a formal registration certificate. The process takes around six months if there are no complications.
What happens if someone opposes your trade mark application?
If someone threatens to oppose your application within the two-month publication period, this deadline can be extended by one month. This allows time for negotiations, with the aim of reaching a compromise without a formal opposition.
If agreement is not reached, the cooling-off period can be extended by up to 18 months if both sides agree, or it can be terminated so formal opposition proceedings can begin. If unresolved, this process can take a year or more and may lead to delays or changes to your application.
How long does a trade mark registration last?
Once registered, your UK trade mark lasts for ten years. You can renew it every ten years indefinitely. If you do not use your trade mark in commerce within five years, it may be vulnerable to cancellation. It can also be challenged if someone can prove they used a similar mark in the UK before your trade mark was registered or used.
Summary
Registering your business name and logo as trade marks is an important step in protecting your brand. It can be more complex than it seems, with important choices about what to register and how to describe your goods and services. Careful planning, along with a proper clearance search for similar existing marks, is required to avoid potential issues. Getting expert advice early from a trade mark solicitor will help you protect your brand, avoid objections and ensure you have a trade mark strategy that supports your business growth.
Read more:
Should I trade mark my business name or logo?