IPO

This diagnostic is for you if:

• you are a UK national or your business is established in the UK; and
• you are using (or planning to use) a trade mark - maybe a business or brand name, or a logo, or a combination of both; and
• you want to protect your trade mark in other countries outside the UK by registering it in an official registry.

The countries where you might consider protecting your trade mark, and that you should therefore think about when answering the questions in this IP HealthCheck, include:

• Countries where your goods or services are sold. (You may be selling them in those countries because you have a branch there, or an agent or distributor, or customers are buying your goods and services from there, for example, via a catalogue, by phone or through your website.)
• Countries where you might sell your goods or services in future.
• Countries where your goods are sourced or manufactured.
• Countries where you are potentially vulnerable to counterfeiters/piracy.

Registration v non-registration

You do not always have to register your trade mark to protect it. In most countries a trade mark is protected automatically if you have been using it for so long that it has built up a good reputation, and people associate it with your goods and services. That means you can take anyone else in your line of business to court if they use a trade mark that looks or sounds the same as, or similar to, the one you are using. In the UK this is called a 'passing off' action.
However, you have to prove:

• That your trade mark has a good reputation (ie there is “goodwill” attached to it).
• That the trade mark is associated solely with your business.
• That you have suffered damage because of the other trader’s use of it.

These can be difficult to prove, which means passing-off cases can be time-consuming and expensive. That's why businesses often apply to register their trade marks. The advantage of registering a trade mark is that it gives you an exclusive right to use the trade mark in the place you have registered it, in relation to the goods and services specified in the registration. For this purpose, goods and services are usually categorised into Classes (for example, there are 45 in the UK), and your application must specify the Class(es) of goods or services your trade mark relates to. If there's a dispute about who has the right to use your trade mark in relation to particular goods or services, the fact that you can show in court that your trade mark is registered in those Classes means you are in a much stronger position than if it is not registered.
Registration can also make a trade mark more valuable – for example, it makes it much easier to:

• Sell it.
• License it to someone else (i.e. allow them to use it, for a fee).
• Mortgage it to raise money.

Registration can be relatively inexpensive compared to the value of your brand to your business. For example, the registry fees to register your trade mark with us here at the Intellectual Property Office (the official trade marks registry for the UK) are £170 to register in one Class if you do it online, and £50 for each additional Class.
Registration usually lasts initially for ten years. You can renew your registration every ten years so, provided you pay the renewal fee, you can enjoy your exclusive right to use your trade mark in perpetuity.



£170 to register our trademark