Prior to filing a trade mark, there are certain filing requirements a business or individual must fulfil in order to heighten their chances of a successful trade mark application. Below is a list of useful tips to consider prior to proceeding with the registration process.
Firstly, it is necessary to ensure that you carry out some prior research to check whether the name or logo you wish to obtain registration for is already registered as a trade mark. In order to see if a name has been taken, one would need to carry out searches via the relevant Intellectual Property Office’s independently or, better yet, have the experts carry out the search for you instead. Should you fail to carry out an extensive search before filing a trade mark, you may find later down the line that a highly similar or identical mark already exists which could lead to lengthy and costly opposition proceedings. Therefore to save both time and money, it is of upmost importance to carry out prior searches before filing a mark.
Secondly, the applicant must ensure the mark they apply for is ‘registrable’ as a mark as there a number of filing requirements set out by the Trade Marks Act 1994 that must be satisfied for a successful registration. One of these requirements is to avoid marks that are too literal or descriptive of their goods and services. For example, ‘creamy ice cream’ for an ice cream store. Thus, the more unique the propose mark, the higher the chances of having a successful application when the name has been conceived by the applicant. Good examples of unique marks are ‘Google’ and ‘Mercedes’.
Once you have decided on a unique name for your trade mark and have carried out extensive searches, it is of upmost importance to act fast; any delay in the application process may result in someone else registering the desired before you do which may end up resulting in rebranding completely.
When applying to register you trade mark, you will be asked to select the goods and services for which you wish the mark to be registered under. Classes of goods (products) and services are apportioned into 45 classes which group similar goods and services into a specific class number. The applicant must ensure that the application covers the correct goods and services for which the mark will be offering as failing to do so may result in the application being delayed or refused.
Lastly but most importantly, secure advice off an expert before proceeding with the application. There are a number of inexpensive and affordable experts who can assist you with the entire process from start to finish. Trade marks and Intellectual Property in general can be complex area, therefore it is best left in the hands of the experts.
Should you need assistance with filing a trade mark, or have any questions relating to the trade marks, contact Lawdit Solicitors today where a member of our team would be happy to assist.