What is a trade mark?
A trade mark is a sign that you use to distinguish your goods or services from those of other businesses. It’s essentially your brand’s badge of origin.
Under the Trade Marks Act 1994, a trade mark can be many things, including:
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words (eg ‘Rocket Lawyer’)
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logos (eg the Nike ‘swoosh’)
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slogans (eg L'Oréal's 'Because you're worth it')
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sounds (eg the Intel inside chime)
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colours (eg Cadbury’s distinctive purple)
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shapes (eg the distinct shape of a Coca-Cola bottle)
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packaging (eg the triangular shape of a Toblerone box)
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smells
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a combination of any of these elements
Note that sounds, smells, or specific colours are often harder to register.
A trade mark helps customers recognise your products or services instantly. It represents your reputation and the quality that customers associate with your business. While you gain some automatic protection for your brand through use, registering your trade mark gives you much stronger legal rights.
How do trade marks arise?
In the UK, you can get trade mark rights in two different ways: by formally registering the mark or by simply using it over time.
Trade mark registration
This is the formal process of applying to the Intellectual Property Office (IPO) to have your trade mark officially recorded. If your application is successful, you're granted the exclusive right to use that mark for the specific goods and services you applied for. This creates a registered trade mark, which gives you the strongest possible protection.
Using a trade mark (unregistered rights)
By simply using your brand name, logo, or slogan in your business, you start to build a reputation, or 'goodwill', with your customers. This goodwill can be legally protected without any formal registration. This creates an unregistered trade mark. While this gives you some automatic rights, they're protected by the law of passing off, which is much harder to enforce than the rights you get from a registered trade mark.
What can't be trade marked?
Not every name or logo can be registered as a trade mark. The IPO will refuse applications for marks that are:
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too descriptive - for example, trying to register the word ‘SWEET’ for cakes or ‘BED’ for mattresses
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too generic or not distinctive - for example, using common words like ‘SOFA’ for a furniture shop
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misleading - for example, a mark that suggests your products are organic when they aren’t
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offensive - marks that are contrary to public policy or accepted principles of morality
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too similar to an existing trade mark - if your mark could be confused with one that’s already registered for similar goods or services
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protected emblems - such as the Royal Arms, flags, or official international symbols, without permission
Why should you register a trade mark?
While you have some automatic rights through the law of passing off, formally registering your trade mark with the IPO offers far superior protection for your brand.
Registering your trade mark gives you the exclusive right to use that mark for the goods and services you’ve registered it for (its ‘classes’). This makes it much easier to take legal action against anyone who uses your mark without permission, a process known as trade mark infringement.
A registered mark acts as a powerful deterrent, as the ® symbol clearly signals that the brand is protected and that you’re serious about defending it. It also provides a public record of your ownership, which can prevent others from accidentally using a similar name or logo. Finally, a registered trade mark is a valuable business asset that you can sell or license to others, creating additional revenue streams.
What is passing off?
If you don’t have a registered trade mark, you may still be able to protect your brand using the common law action of passing off. You can use the ™ symbol next to your brand name or logo to show that you are claiming it as a trade mark, even though it hasn't been formally registered. Passing off prevents a competitor from misrepresenting their goods or services as being connected with your business. Essentially, it stops them from ‘passing off’ their products as yours to ride on the coattails of your reputation and goodwill.
What do you need to prove for a passing off claim?
To win a passing off claim, you have to prove three key things, often called the ‘classic trinity’:
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goodwill or reputation - you must show that your business has a significant reputation and that customers associate the brand name, logo, or packaging (the ‘get-up’) with your goods or services (ie the mark’s good name is associated with your customers choosing to buy from you)
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misrepresentation - you must prove that the other party’s actions have or are likely to confuse the public into thinking their goods or services are yours (eg if they gave consumers the impression that their products were yours). This misrepresentation must be deceptive, whether it was intentional or not
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damage - you need to show that the misrepresentation has caused, or is likely to cause, damage to your business. This could be a loss of sales, but it can also be damage to your brand’s reputation if the other party is offering inferior products
If your passing off claim is successful, you may be granted similar remedies to those available for a trade mark infringement claim, including damages or an order preventing continued use of the trade mark by the third party.
What's the difference between trade mark infringement and passing off?
While both actions protect your brand, they work in different ways and offer different levels of protection. The key difference is that trade mark infringement applies to registered trade marks, while passing off protects the goodwill of unregistered trade marks.
It's generally much easier and cheaper to take legal action for trade mark infringement. With a registered mark, you only need to show that someone is using a mark that is identical or confusingly similar to yours for the same or similar goods or services. For passing off, you have the much harder task of proving goodwill, misrepresentation, and damage.
How can I protect my brand?
Taking active steps to protect your brand is essential for any business. The best approach depends on whether you have a registered trade mark or are relying on unregistered rights.
By registering your trade mark
The strongest way to protect your brand is by registering your trade mark. In the UK, this is done through the IPO. The process involves checking that your mark is unique and filing an application for the specific classes of goods or services you want to protect. Once granted, a trade mark lasts for 10 years, but it can be renewed. A registered trade mark gives you the legal right to take action against anyone who uses it without your permission. For more detailed information, read How to register a trade mark.
If you trade outside of the UK, you’ll need to consider separate protection. For more detailed steps, read our guides on Registering a trade mark in the EU and International trade marks.
While you can file a trade mark application yourself with the IPO, the process is complex and application fees are non-refundable. Using our Trade mark registration service can save you time and avoid costly mistakes.
By enforcing your rights
If you believe someone is using your brand without permission, the first step is often to send them a formal Cease and desist letter. This is the case whether you have a registered or unregistered trade mark. This letter explains your rights and demands that the other party stop using your brand, warning them of potential legal action if they fail to do so.
Taking the step to formally protect your brand is crucial for your business's long-term success. The strongest way to do this is by registering your trade mark. If you’re ready to get started, our Trade mark registration service can manage the complex application process from start to finish in the UK, EU, and USA. For any specific questions about your situation, don’t hesitate to Ask a lawyer.
