Trademark protection establishes a business’s legal claim over the brand under which it trades. For early-stage businesses, the trademark position can affect the ability to grow, to raise investment, and to defend the commercial identity of the business against later entrants. An application made on the wrong basis, or registered in the wrong class, may not protect the business in the way the owner intended.
This article sets out the principal legal and commercial considerations that arise when an early-stage business registers a trademark in the United Kingdom.
Trademark availability and the UKIPO register
A trademark is registered under the Trade Marks Act 1994, administered in the United Kingdom by the Intellectual Property Office (UKIPO). Registration of a trademark gives the proprietor an exclusive right to use the mark in connection with the goods or services for which it is registered, and provides the legal basis for objecting to use of an identical or similar mark by a third party.
Before any application is made, the proposed mark should be searched against the UKIPO register for identical and similar marks. Where the business intends to trade internationally, equivalent searches should be carried out on the EU Intellectual Property Office register and on the United States Patent and Trademark Office register, depending on the markets concerned. Unregistered marks that have acquired distinctiveness through use at common law should also be considered, particularly in industries where established brands trade without formal registration.
The mark must also be assessed against the absolute grounds for refusal under section 3 of the Trade Marks Act 1994, which include descriptiveness, lack of distinctive character, and use of marks that would be deceptive or contrary to public policy. An application that fails on absolute grounds will not be accepted by the UKIPO, and the application fee will not be refunded.
Class selection under the Nice Classification
Trademarks are registered against specific classes of goods and services under the Nice Classification system, which divides goods and services into 45 classes. A trademark registered for clothing in class 25 does not protect the owner against use of the same mark in cosmetics in class 3 or software in class 9. Each line of business activity needs to be protected in its own class.
The selection of classes should reflect the goods and services that the business sells today, the goods and services that it credibly expects to provide within the next two to three years, and any adjacent categories where there is a foreseeable risk of consumer confusion. Filing in the correct classes at the outset is materially less expensive than expanding registration after a third party has filed in an adjacent class.
Domain availability and trademark availability
Domain availability and trademark availability are two distinct legal questions. The availability of a domain name confirms only that no other party has registered that domain. It does not indicate whether the name is registered as a trademark, whether use of the name would infringe an existing registered mark, or whether the name itself can be registered. The two checks must be carried out separately. A business that relies on domain availability as a proxy for trademark availability may begin to trade under a name that infringes a third party’s registered rights.
Timing of the application
The point at which an application is filed affects both the scope and the value of the resulting registration. An application filed before the name and specification of goods are settled may result in a registration that does not cover the business’s actual activity, or in wasted fees if the specification has to be revised.
An application filed after substantial public use of the name carries different risks. A third party may register the same or a similar mark first; the application may be opposed by an existing proprietor; and any rights acquired through use will need to be evidenced. The appropriate point to file is once the name and the intended specification of goods or services are settled, and before any meaningful public use or trading activity in the relevant class.
For founders raising investment, the trademark position is a question that investors and acquirers will ask. A clear and current registration assists the diligence process; an absent or partial registration may delay it.
Trademark protection across rebrands
A registered trademark protects the specific mark that was filed. Where a business rebrands by changing its wordmark, its logo, or its stylisation, the new mark may fall outside the scope of the existing registration. The test is whether the new mark would be perceived as the same mark by an average consumer in the relevant market. Where the answer is no, a fresh application is likely to be required in order to maintain protection.
Rebrands should be planned with the trademark position in mind, and the legal cost of refiling should be reflected in the rebrand budget.
Speak to Ai Law
Ai Law advises founders, agencies, and brand owners on trademark registration, opposition, and enforcement in the United Kingdom and abroad. To discuss the trademark position of a new business, an existing portfolio, or a planned rebrand, please contact a member of our team.