How do you register a trademark?

Trademarks are valid only in the countries where you register them. A few exceptions apply to Common Law trademarks which consist of unregistered rights. However, Common Law protection does not give the same benefits as those granted when you register a trademark. Typically, a trademark must be registered in every country where it is used. Otherwise, it is likely that little or no protection will be granted. When you register a trademark you will need to identify the goods and services in connection with the use of the mark.

Trademarks are subject to the principle of speciality. According to this principle, identical or similar trademarks can coexist if they are used for completely different goods and services. When this is the case, a Court will consider that there will be no likelihood of confusion between the trademarks. If the goods and services are similar or can be related (for example, shoes and clothes, perfumes and cosmetics), there may be a likelihood of confusion and the posterior mark may be rejected for registration.

Prior searches, also called clearance searches, are an important part of the procedure when you apply to register a trademark. Successful registration of a trademark does not mean that you can use the trademark in commerce. This point can be confusing. Even if your trademark is registered, you could still be infringing on a third party right. Trademark searches will give you a valuable insight into a brand freedom of exploitation. Beware that even if you own a registered trademark, you could still be pursued for trademark counterfeiting.

Prior searches should be conducted for more than just registered trademarks. A broad range of intellectual property rights can prevent the freedom of using a trademark in commerce. These prior rights include: - national registered trademarks; - international trademarks; - domain names for similar brands; - common law trademarks; - websites using a similar brand name; - brand names used in social media or blogs; - copyright; - company names.

For example, if you plan to register a new trademark using part or all of a book title, this act would be an infringement of the author's and the publisher's rights.

Prior searches should always be comprehensive and be conducted by a trademark lawyer. A qualified lawyer is the best person to give you legal advice as to the availability of a trademark.

If you wish to obtain more information on how to register a trademark and prior trademark searches, please contact us or take a look at our website www.register-your-trademark.co.uk.