One of the first questions we hear from people starting a business in the UK is whether or not they should trademark their business name.
Well, you can’t. But you can trademark a product or service.
Trademarks are complicated beasts, and successfully registering a trademark only protects in you the country in which that trademark is registered. If you plan on running an international business, then you might need to register your trademark in multiple other jurisdictions. This is especially true in China, where trademark theft is rife, and the legal system offers little protection.
A trademark is any mark that uniquely distinguishes one business’s products or goods from another’s.
The mark can be a word, symbol, colour or combination of colours, sound, etc.
Each jurisdiction has its own rules for what precisely can be trademarked and what cannot.
For example, in the USA and Australia, it is possible to trademark a unique scent. (The scent must be able to be described using words, though.)
Some jurisdictions even allow you to trademark plants.
In Australia, a particular style of jumping is trademarked by Toyota — it is called a motion trade mark.
Yes, it’s a bit of a crazy world. But that doesn’t change the law and your rights within that law.
The UK is fairly limited in what one can trademark compared to other, more liberal jurisdictions such as Australia and the USA.
In the UK, one can trademark:
A company name and domain name cannot be registered as a trademark.
Owning a trade mark doesn’t automatically entitle you to that particular domain name. This matter has been the source of many lawsuits over the decades (especially on the part of Microsoft).
And, of course, if you register a domain name with an accredited domain name registrar, that doesn’t automatically give you the right to trade using that name.
The only way to obtain the rights for your trademark is to properly register that trademark in the UK as well as in any other jurisdiction in which you plan to sell your goods.
In addition to domain names and company names, the UK’s Intellectual Property Office (IPO) specifies the following items as taboo for trademark purposes:
Protected emblems and symbols such as:
Most countries have a fairly similar procedure for registering trademarks. The UK’s specific procedure is:
Once a mark is formally registered by the IPO, the owner has full legal rights to defend against its use and abuse by others.
The UK uses a first-to-file policy with regards to trademarks which means that rights are conferred only on successful registration and not on previous use.
This is in contrast to the USA, which uses the first-to-use policy. That means that the first person to use the mark has a right to object to it being registered even if they have not filed for registration previously.
There are pros and cons to both systems.
First-to-file systems can lead to abuse and the loss of rights simply for failing to register a mark that one has been using for years. Whereas as first-to-use policies can lead to frustration (and lawsuits) as a result of marks being unknown until much later because there is no central database to search for marks.
Our head of content, Julia has spent the past 20 years assisting entrepreneurs with all aspects of business launch and growth strategies in various industries around the globe.
Too many startups underestimate the importance of having professional legal support in their business. Legal support is one of the two services that every startup absolutely must-have when it is starting out. Unfortunately, lawyers tend to be pricey creatures, sometimes charging several hundred pounds an hour for the simplest of services. This article lays out some cost-effective options for obtaining legal advice for your startup or new business. But first, some basics: Why legal support is essential for business success Running a business is probably 40 per cent accounting, 40 per cent legal, and 20 per cent everything else. Sure, you need to market and conduct sales to get in business. But what if the sales you got in are not adequately described in an iron-clad business contract? What if that incredible marketing campaign you just planned happens to infringe on someone’s trademark? Or what if the marketing action requires certain permissions, as in the case of flyer distribution, and you didn’t know about these restrictions? Having a lawyer to hand to ask for advice on each of these matters is crucial. It is also imperative to be well stocked up on multiple legal business documents so that you don’t have to go to a lawyer for every single new client you get on board. The plethora of things that can go wrong for failing to stay up-to-scratch on your business’s legal needs can include: Tax non-compliance Failing to meet contractual obligations (this could occur in any department of the business) Failure to comply with employee-related laws, especially laws on discrimination Failure to comply with any newly enacted laws Cost-effective legal solutions for a business Fortunately, there are alternatives out there. Just as the medical profession is now changing to a telemedicine and telehealth model where you can visit multiple practitioners simply by using the video camera on your phone, so is the world of legal services adapting to meet the needs of a more tech-savvy generation. Free online legal advice The first option available is, of course, the internet in general. The internet is loaded with articles and how-tos and videos offering legal advice. Many of these articles come with bold disclaimers on them, explaining that their advice should be double-checked by a professional. Our recommendation is to use such freely available information with due caution. Cross-reference everything you read and verify that the information really is correct. Even so, such a method of seeking legal “advice” should only be reserved for the most mundane and general of subjects, never for active litigation where the advice of a legal professional is crucial. Hunting out the internet for business legal advice has other flaws: It can be terribly time-consuming. Often, much of the information found applies to a different country, especially the USA. Legal terminology makes understanding such information difficult. Many of these articles are written in “legal-speak” (unlike our own legal help articles here at Start My business, where we try to give legal advice in plain English). Government Website The UK government’s website is a fantastic place for legal advice relating to businesses based in the UK. The main pro about this website is that it is guaranteed to be accurate. The website is, however, a little complex to navigate and read. The website doesn’t seem to make too much of an effort to offer advice in “plain English”, either. Legal advice from banks Some banks offer legal advice or some kind of package that covers your legal fees. Barclays, for instance, offers legal insurance for a variety of legal costs. (Although there is no pricing on their webpage as of this writing for such insurance, which is always a red flag when it comes to looking for something affordable.) Some banks have a page of information dedicated to legal tips. Again, such info is usually reliable, but the legalese can be difficult to wade through. Legal clinics Legal clinics are a way for law students to gain experience in working with real-life cases. These clinics often require you to make an appointment and then to drive to their offices to have a face-to-face meeting. Different clinics specialise in different aspects of the law (business, family, child, etc.) so you might need to do some hunting to find a clinic near you that offers you the business advice you need. Of course, in this world of fast-paced services, waiting for an available appointment can be frustrating if your legal issue is urgent. Legal clinics tend to specialise in pro bono work. Legal advice helpline The world has gone digital. Also, with new restrictions in place as a result of needing to curtail the spread of disease, meeting in person is now more cumbersome. A legal advice helpline is the ideal solution for businesses who are seeking legal advice, provided the helpline matches the following criteria: It is affordable. You can speak to an accredited solicitor. It is available 24/7. The main problem with many of the aforementioned services is that they do not put you in touch with an accredited, professional and experienced lawyer. The second problem is that they can be slow if you need to wait for an available appointment. This can often also be true of making an appointment with law firms. The Start My Business legal advice hotline is available 24/7 and will put you in touch instantly with a legal professional who is qualified to give you legal advice instantly. About author Julia Richards Our head of content, Julia has spent the past 20 years assisting entrepreneurs with all aspects of business launch and growth strategies in various industries around the globe.
One of the first questions we hear from people starting a business in the UK is whether or not they should trademark their business name. Well, you can’t. But you can trademark a product or service. Trademarks are complicated beasts, and successfully registering a trademark only protects in you the country in which that trademark is registered. If you plan on running an international business, then you might need to register your trademark in multiple other jurisdictions. This is especially true in China, where trademark theft is rife, and the legal system offers little protection. What is a trademark? A trademark is any mark that uniquely distinguishes one business’s products or goods from another’s. The mark can be a word, symbol, colour or combination of colours, sound, etc. Each jurisdiction has its own rules for what precisely can be trademarked and what cannot. For example, in the USA and Australia, it is possible to trademark a unique scent. (The scent must be able to be described using words, though.) Some jurisdictions even allow you to trademark plants. In Australia, a particular style of jumping is trademarked by Toyota — it is called a motion trade mark. Yes, it’s a bit of a crazy world. But that doesn’t change the law and your rights within that law. What can you trademark in the UK? The UK is fairly limited in what one can trademark compared to other, more liberal jurisdictions such as Australia and the USA. In the UK, one can trademark: Words Sounds (e.g. this sound from Intel) Logos Colours (Castrol has registered its special shades of green and red. Cadbury tried to register its special shade of purple, but this was contested quite forcefully by Nestlé who eventually won the case at the highest levels.) A combination of any of the above Can you trademark a domain name in the UK? A company name and domain name cannot be registered as a trademark. Owning a trade mark doesn’t automatically entitle you to that particular domain name. This matter has been the source of many lawsuits over the decades (especially on the part of Microsoft). And, of course, if you register a domain name with an accredited domain name registrar, that doesn’t automatically give you the right to trade using that name. The only way to obtain the rights for your trademark is to properly register that trademark in the UK as well as in any other jurisdiction in which you plan to sell your goods. What can you not trademark in the UK? In addition to domain names and company names, the UK’s Intellectual Property Office (IPO) specifies the following items as taboo for trademark purposes: Protected emblems and symbols such as: Flags Hallmarks Other State emblems# Official signs Armorial bearings (coats of arms) What is the procedure for registering a trademark in the UK? Most countries have a fairly similar procedure for registering trademarks. The UK’s specific procedure is: Search existing databases to see if the mark is already trademarked. Determine the class for the mark. (The UK, like most jurisdictions, uses the Nice classification system). File the application. The IPO can then raise objections on the basis of deficiencies in the filing. These are replied to by the filer or their representative. The time frame for the above: About one month. IPO raises official objections if any. Filer furnishes arguments against the objection. If the arguments succeed, the filing continues. Time frame: About 3 – 5 months. The registration is published. This is followed by a two-month period (extendible to three months) in which any opponents may file an opposition to the trademark (as happened between Nestlé and Cadbury when the latter tried to register its special shade of purple). If there is no opposition (or the opposition fails), then the mark is formally registered. Once a mark is formally registered by the IPO, the owner has full legal rights to defend against its use and abuse by others. First-to-file vs first-to-use The UK uses a first-to-file policy with regards to trademarks which means that rights are conferred only on successful registration and not on previous use. This is in contrast to the USA, which uses the first-to-use policy. That means that the first person to use the mark has a right to object to it being registered even if they have not filed for registration previously. There are pros and cons to both systems. First-to-file systems can lead to abuse and the loss of rights simply for failing to register a mark that one has been using for years. Whereas as first-to-use policies can lead to frustration (and lawsuits) as a result of marks being unknown until much later because there is no central database to search for marks. About author Julia Richards Our head of content, Julia has spent the past 20 years assisting entrepreneurs with all aspects of business launch and growth strategies in various industries around the globe.
Unfortunately, the world of “legalese” tends to close out understanding from people who do not work in the legal profession. Here at Start My Business, we operate on the philosophy that everyone should be able to understand and take care of their business’s legal issues without the need to call in an expert lawyer. In this article, we will explain the often misunderstood concepts of: Patent Inventorship Patent Ownership Authorship What is a patent? Firstly, what is a patent? The Oxford Dictionary defines a patent as: “A government authority or licence conferring a right or title for a set period, especially the sole right to exclude others from making, using, or selling an invention.” There’s an important word in that definition above which is key to understanding these concepts. That word is invention. A patent is, basically, a license or authoritative document from a government which gives an entity the sole right to make, use or sell an invention. When a legal entity files for a patent and gets it approved, that gives that entity (a person or corporation) the right to take legal action against any other person or corporation that is trying to make, use or sell that specific invention. What is Patent Inventorship? Who invented the item or process being patented? This is a matter to be determined before — and sometimes during — the patent application. One thing is certain: The inventor of a product or process is always a natural person. The inventor is never a corporation or a company. Thomas Edison was an inventor. Nikola Tesla was an inventor. Benjamin Franklin was an inventor. All these inventors were people, not organisations. A good example of an inventor who did not immediately gain the right to commercialise and protect his invention is Shane Chen, the inventor of the hoverboard. What is authorship? Authorship applies specifically to artistic works, more specifically to written works — journals, essays, books, etc. Authorship is a subject dealt with under copyright law. Inventorship is a subject dealt with under patent law. Here are some important concepts to understand: Authorship relates to authored works. Inventorship relates to inventions. Establishing who the inventors of a process or product are can often be a fairly subjective and complicated process. Establishing who the author of a publication is, is not. Either someone wrote something that was published, or they didn’t. The biggest problem with not naming the correct inventor in a patent is that it can make the patent unenforceable if litigation ever ensues. It is quite common that parties attempt to invalidate a patent by challenging the validity of its stated inventorship. If a party does manage to prove that the inventor (or inventors) named in a patent are not the true inventors, the patent can be rendered null and, therefore, unenforceable. Work for Hire It’s important to understand the concept of “Work for Hire”. Often, an author or inventor transfers their rights to their invention or authored works because they have specifically signed a contract doing so. An author who creates work “for hire” automatically transfers the copyright for that work to the entity which has hired them. In the case of an inventor, nothing can ever change the inventorship of something, not even a contractual clause, but contracts almost always transfer ownership to the hiring entity for anything invented. Again, it’s important to appreciate the difference between copyright law and patent law. “Ownership” is tightly coupled with copyright. In patent law, the creator and owner are separated. The copyright owner is also the “owner” of the work. An investor can transfer ownership but will always remain the inventor. What is patent ownership? We’ve touched on this already above, but let’s summarise. An inventor has no right to monetise an invention which they do not own. Ownership of an invention can be transferred by contractual clauses, or in a patent. The owner of a patent can litigate in an attempt to prevent anyone else from using or manufacturing an invented product, including the inventor themself. Ownership is, essentially, a proprietary right. So, can anyone claim ownership for a patent? No, definitely not. And that’s why it’s so important to specify the inventor in any patent application. Only the inventor or the person claiming proprietary ownership ov er the invention can file for a patent. This is why Work for Hire is such an important concept. If the inventor has signed away their right to ownership of an invention, then the rightful owner can file for a patent on that invention. Being an inventor is something that can never be taken away from a person, and it looks great in someone’s CV! But it doesn’t automatically confer ownership. Simplifying the patent application process We hope the above clarifies the patent application process, as well as the differences between ownership, authorship and inventorship. Applying for a patent is crucial if you wish to protect your or your employees’ inventions. It’s important to understand the patent application process as well as the basic terminology of patent law to ensure a smooth and successful application in the end. About author Julia Richards Our head of content, Julia has spent the past 20 years assisting entrepreneurs with all aspects of business launch and growth strategies in various industries around the globe.