Questions to ask yourself before making a trade mark application

Before you rush off and pay the £200 application fee to register your name or trade mark, you should carefully consider whether your name or logo is capable of registration. The £200 application fee is non-refundable so if your name or logo is not capable of registration, you will not receive a refund. We offer a clearance service so that you can check that your name or logo is capable of registration before making the application and paying the fee but the following should give you a good idea as to whether you will be successful with your registration application:

1. Does my proposed trade mark distinguish my goods and services from those of my competitors? If not (for example The Bacon Company), you won’t be able to register it.
2. Does my proposed trade mark describe my goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of my goods or services (such as The Danish Bacon Company)? If so, you may not be able to register it.
3. Is my proposed trade mark customary in my line of trade? If so, it may not be capable of registration.
4. Is my proposed trade mark distinctive? If not, it may not be capable of registration.
5. Is my proposed trade mark offensive (for example including pornography)?  If so, you won’t be able to register it.
6. Is my proposed trade mark against the law (for example promoting illegal drugs)? If so, you won’t be able to register it.
7. Is my proposed trade mark deceptive (eg including the word ‘organic’ when the product is not organic)? There should be nothing in the mark which would lead the public to think that your goods and services have a quality which they do not.
8. Is my proposed trade mark a specially protected emblem (such as a flag or armorial bearing)? If so, you won’t be able to register it.
9. Is anyone else using my proposed trade marks? Search free online at http://www.ipo.gov.uk/tm/t-find/t-find-text/

If you would like to talk to us about our clearance service, please email us to arrange a free consultation.

© 2011 Suzanne Dibble, business law expert