Webinar - Why you need a Trade Mark - and how to search for one - 2022.ppt

1. Why you need a
Trade Mark
and how to search for one
Neil Infield – Manager
Business & IP Centre
neil.infield@bl.uk
www.inoutfield.com/

2. http://www.slideshare.net/infield/

3. What I will cover today
• Why you need a trade mark
• Different approaches to choosing a
name
• The legal bit…
• Searching for trade marks and classes

4. The British Library is for anyone who wants to do
research - academic, personal or commercial
http://www.bl.uk

5. The six forms of Intellectual Property
Three you can register:
Patents - How something works or the process of making it
Trade marks – Words or logo to indicate the origin of the
products or services
Designs – The distinctive look of the product or object
And three you don’t:
Copyright – Artistic or written works eg. Paintings, books, films,
music etc.
Know how – The practical knowledge of how to get something
done.
Trade Secrets – Confidential information which is not generally
known to the public and is subject of reasonable efforts to keep
it secret.

6. Disclaimer
This presentation is not legal advice
We strongly advise you to ask a trade mark attorney
before proceeding with using or applying for rights –
most will offer a free half hour consultation.
You can find your nearest specialist trade mark
attorney at the Chartered Institute of Trade Mark
Attorneys.
www.citma.org.uk

7. A brand is trust.
A brand is a distinctive name, trademark and trade
dress that clearly identifies and enhances the value
of a product, service or company
Gregory Kolligan - Brand/Equity International
‘Names are everything’ Oscar Wilde
What is a brand?

8. Trade Marks are everywhere you look

9. Words or symbols under which goods or
services are provided
What is a trade mark?

10. What I will cover today
• Why you need a trade mark?
• Different approaches to choosing a
name
• The legal bit…
• Searching for trade marks and classes

11. You need to stand out in a competitive market

12. If you are successful people will copy you.

13. OK, let’s change our bottle shape to keep us distinctive

14. Dammit, they've only gone and copied us again…

15. Your name and logo are the only things
your competitors can’t copy

16. The power of a Trade Mark
Rolls Royce quality and luxury
Starbucks ubiquity
NHS trust and care
Rolex aspirational

18. “The hardest bit of naming is staying objective.
It’s virtually impossible not to infer your own
personal experiences and prejudices on to the
meaning and suitability of a name.”
Matthew Weiss – Coley Porter Bell
Trade Marks

19. • Do lots of Googling of your competitors
• Use a business name generator
https://www.oberlo.co.uk/blog/free-business-name-generators
• Come up with a list of names you like
• Get your family, friends and potential customers
to vote on their favourite and why
Using the Lean Startup
approach to names

21. Make
sure your
names
and logos
don’t
have any
unwanted
interpret-
ations…

22. If you get it wrong you might want to
change your name

23. • Acompany name is not a trade mark
• Adomain name is not a trade mark
• Aregistered trade mark trumps
everything except a household name
• ATM mark is “totally meaningless”
Trade Marks Myths Exploded

24. 1. Is it legal?
2. Is it available /
not in use?
3. Is a good domain
name available?
4. Is it memorable?
5. Is it evocative / appropriate to your activity?
The 5 rules of Trade Marking

25. What I will cover today
• Why you need a trade mark?
• Different approaches to choosing a
name
• The legal bit…
• Searching for trade marks and classes

26. • Your actual name:
o Ford
o McDonalds
o WH Smith
o Chanel
o Selfridges
o Jo Malone
Different approaches to choosing your name

27. Boots was established in 1849 by John Boot

28. https://www.flickr.com/photos/jaguarc
arsmena/15162843106/
https://www.flickr.com/photos/lge/4639985153 https://upload.wikimedia.org/wikipedia/commons/
f/f1/Vivienne_Westwood_Life_Ball_2011_c.jpg

29. • Descriptive:
o General Motors
o International Business Machines
o British Gas
o Pinterest
o We Buy Any Car
Different approaches to choosing your name

31. • Generic:
o Penguin
o Orange
o Amazon
o Virgin
o Kayak
Different approaches to choosing your name

32. Name the famous brand…

33. Apple Corps Ltd

37. • Made up:
o Yahoo!
o Spotify
o Skype
o Waze
o WhatsApp
Different approaches to choosing your name

38. • Focus on the name first
• Logo’s come second because:
• You can’t search for a logo on Google
• You can’t use a logo in a radio advert
• Do a search test: Kodak vs Hard Water
• Avoid household names like the plague!
Tips

39. Would you choose a trade mark that is rude
and politically incorrect?

41. What I will cover today
• Why you need a trade mark?
• Different approaches to choosing a
name
• The legal bit…
• Searching for trade marks and classes

42. 8 crucial points you need to know – part 1
1. Choosing your name is a legal
and
a marketing activity
2. It should memorable e.g. Krispy Kreme
3. It needs to be distinctively different from
others
e.g. Five Guys not
McDonnalds with 2 nn’s

43. It needs to be distinctively different from others

44. 8 crucial points you need to know – part 2
4. It can’t be descriptive e.g.
Compare the Market was not
originally accepted by the IPO
5. It should be registered
e.g. Innocent Smoothies vs
Innocent Vitamins

45. What can happen if you don’t register…
Contains all natural
ingredients
with no added sugar
and ‘no funny business’
Ahealthy, sugar-free food
supplement that contains
‘no badness’.

46. 6. They are limited by
geography e.g. UK, Europe,
additional countries
7. They are limited by activity –
which of the 45 Nice classes
will you be operating in?
8. Famous trade marks are an
exception to rule 7.
8 crucial points you need to know – part 3

47. Trade Marks - Tips
•Make up names are more
likely to be distinctive e.g
Adidas, Kodak, Waze
•But maybe you need a
tagline too?
•This can also be registered.

48. Trade Marks - Tips
•Use it or lose it - a trade mark is
to protect your business activity
not to block others out.
•Enforce your rights - don’t
hesitate to send out Cease and
Desist letters
https://www.lawdepot.co.uk/contr
acts/cease-and-desist-letter

49. Trade Marks - Tips
Use it or lose it

50. Tagline quiz
“Just do it” Nike
“Think different” Apple
“Because you're worth it” L'Oreal
“It's finger lickin' good” KFC
“Taste the feeling” Coca-Cola
“I'm lovin' it” McDonald's

51. Why register your Trade Mark?
•Makes it easier for you to take
action against anyone infringing
your trade.
•Allows trading standards to bring
criminal action against
counterfeiters.
•Makes it a piece of property which
you can sell, franchise or license.

52. Registering rules and tips
You can have the
same name as
someone else in a
different country…
As long as they haven’t
registered it in yours

53. Registering rules and tips
You need to find out which of the 45 Nice classes
apply to your business. Because…

54. Registering rules and tips
You can have exactly the same name as someone
else in a different class…
Class 10
Medical and veterinary
equipment
Class 6
Common metals and
their alloys…
Class 31
Raw agricultural,
horticulturaland
forestry products…

55. Registering rules and tips
3. But ..
you can’t have a similar name in the same class…
4. It can’t even sound similar.
5. You need to search the UKIPO Trade Mark database

56. Registering rules and tips
3. But ..
you can’t have a similar name in the same class…
4. It can’t even sound similar.
5. You need to search the UKIPO Trade Mark database

57. Absolute grounds for refusal in the UK
• Using wording that
describes the product or
service
• Bad faith -
e.g. registering marks to
block others from using
• Using names or pictures of
famous people or characters
X

X

58. Absolute grounds for refusal in the UK
• We Buy Any Car
• We WantAny Car
• We Trak Any Car
• We SprayAny Car
• Fox BuysAny Car
• We Finance Any Car
• HalfordsAny Part forAny Car
Using wording that describes the product or service…
Confused?

59. Absolute grounds for refusal in the UK
• Being against the law –
e.g. recreational cannabis use
• Using blasphemy or obscenity
or causing offence
• Being deceptive -
e.g. deliberately similar to an
existing mark
X


60. Absolute grounds for refusal in the UK
“6ter” Prohibited marks –
e.g. armorial bearings, flags and other state emblems

61. Routes to Registration
• UK Intellectual Property Office
- UK only
• Direct application to foreign offices -
you may claim within 6 months
• European Union trade mark – EUIPO
• Madrid Protocol
apply to register the trade mark in
multiple countries with single form

62. Charges - UK
• UK IPO fees: Standard (online) £170 + £50 for
each additional class
– Right Start - the Intellectual Property Office will assess
your application and tell you if it meets the rules for
registration.
£100 + £100 if you go ahead + £50 for add. Class
• No refund if the application is turned down
• No alterations allowed once started

63. Charges – EU and International
• 850 euros (£750) - covers one class
+ €50 for the second class
• 903 swiss francs (£730) for colour for
International application (WIPO)

64. Timings
• UK: 4 to 6 months if the application is unopposed
– Applications with oppositions can take up to an
additional six months to complete, depending on the
proceedings.
• EU: 9 to 12 months if the application is unopposed
– Applications with oppositions can take up to an
additional six months to complete, depending on the
proceedings.

65. Trade Marks can last forever provided...
• The owner continues to use it.
• Fees are paid to keep it in force (typically every
ten years).
• The owner succeeds in preventing the mark
from becoming “generic”.
• It is made clear the mark is registered.

67. What would you call
this portable building?

68. Case study - Mascara
Indomitable
1. Find the class… Class 3 - Skin care products etc
2. Search for similar names…
3. Find out who owns it…
How similar are the names, and who owns them?

73. Solution - make your logo as different as possible
• Add a word
• Different image
• Different type style
• Different capitalisation?
• Ultimately it’s a business decision…
• How similar are the names…
• And who the owners are

74. What I will cover today
• Why you need a trade mark?
• Different approaches to choosing a
name
• The legal bit…
• Searching for trade marks and classes

75. Searching for Trade Marks
1. Find out what class your business is in.
2. Search for your name
3. Review how similar the results are to your
name
4. Review who owns those names
- are they multinationals?

76. Decide on your
format
1. Words e.g. Tesla
2. Typestyle e.g.
3. Logo included or
separate e.g.

77. Nice Classification
• Established in 1957
• Divides all human activity up into 45 classes
• Covers 84 countries
• Anew edition is published every five years
• http://www.wipo.int/classifications/nice/en

78. Let’s search for Innocent smoothies

79. Search for “tmclass”

82. 


X
Search for “trade mark search UK”

92. https://www.wipo.int/classifications/nivilo/vienna/index.htm

98. https://www3.wipo.int/branddb/en/

102. Further reading

103. There is no
such thing as
a bad name…
What do you
call something
when you can’t
think of its
name?

104. What do you call a really great
Greek restaurant?

105. There is no such thing as a bad name…

106. But there are some truly great ones

107. But there are some truly great ones

108. But
there
are
some
truly
great
ones

109. Let’s
end
on a
trade
mark
safari
…

112. Or…

116. Please fill in your forms –
we really need them!

118. http://www.slideshare.net/infield/