How to protect your brand and trading names

Male hand holding blank business card to another male hand

The goodwill in your trading names and brands is one of the main reasons your customers or clients buy from you. This article explains how you can stop other businesses from registering or using the same, or similar, names or brands to yours, and damaging your business

The more valuable your names and brands, the more important it is that you take proper steps to protect your intellectual property. You should start by ensuring that your trading name is protected. This is especially true if you license an agent or distributor to use it, or they will be selling your branded goods and services. If you are entering into a joint venture or bringing a venture capitalist into the business, you may be asked to confirm your trading names are protected.

Use your trading name and brands

The best way to protect a name or brand is by using it. The more people associate a name with your business and/or your goods and services, the more the courts will recognise that you have legal rights in it, and punish infringers.

Register your intellectual property

Consider protecting your names and brands by registering them. For example, if your name or brand - whether words, logos, pictures, letters, shapes, sounds and smells, or any combination of them - distinguishes your goods or services from those of other businesses, you can apply to register it as a UK trade mark at the Intellectual Property Office. That gives you a monopoly on use of your trade mark in relation to the goods and services you specify in your application, that the courts will enforce quickly and easily.

You could also register it as a domain name and (if it isn't already a company name) you could register it as a limited company name at Companies House. The tables below give more information on each option.

Watch out for infringement of your intellectual property

Consider using a 'watching' service to monitor the trade marks registry, Companies House and different domain name registries for infringers. As soon as an identical or similar name is applied for, or registered, you are notified so you can take action.

Also monitor informally: use search engines to find mentions of the same or similar names on the internet, monitor the trade press and Yellow Pages, and listen for news on the grapevine from customers, business partners, suppliers and others.

Take action against infringers

Take fast, effective action against infringers. The longer you leave it, the more you are taken to have accepted the infringement.

The same dispute will often give you several different legal ways to attack the infringer. You may be able to:

  • Take them to court for 'passing off' and for infringing your registered trade mark.
  • Object to their trade mark application.
  • If you have already registered a limited company name, object to a new company registration in a similar name.
  • Object to Company Names Tribunal to the registration of the same or a similar name as a limited company name, whether or not you have registered it as a limited company name. This is because it is either the same as one in which you have goodwill or is so like your name as to be likely to mislead by suggesting a connection between the company and you (under name adjudication procedures).
  • Initiate one of the domain name dispute resolution procedures.

You may need to take action in other countries if you are trading or represented there.

Decide what action you will take

You will need a strategy, but beware. Different criteria will be applied in each forum - it's quite possible to win in one but lose in another. Also, different remedies are available, and there are different timescales for each set of proceedings. Pursuing every remedy at full speed might be appropriate - but equally, it could make the dispute messier than it needs to be, and give heart to the infringer.

Consider your strategy carefully with an adviser, to:

  • Identify all your legal options at the outset.
  • Decide the outcomes you want.
  • Decide which options will achieve them.
  • Plan a schedule for each, and co-ordinate them to give yourself the best chance of achieving your outcomes.

Turn the IP dispute to your advantage

Usually, you want to stop the infringer and get compensation. Another possible outcome is to license the infringer to use your name legitimately, in return for payment, so the dispute turns into a revenue stream for you. In any dispute, consider whether the infringer is a potential collaborator, rather than just the 'other side'.

IP squatters

But some infringers will have registered your name simply to extract money from you. They have no other commercial interest in it. These can be tricky and untrustworthy individuals. It is sensible to use an adviser as an intermediary in negotiations with them, who knows the tricks of the trade.

Always take advice on any name or brand dispute. You need judgement and experience on your side.

Use your name
  • If you have developed goodwill for your name (including logos, designs, etc) in your market, you acquire rights that the courts will recognise and protect - lawyers say that your name becomes a 'common law' trade mark. The more you use your name, the more likely that it will develop a reputation that the courts will protect.
  • You can bring a 'passing off' action in the courts to protect your common law trade mark against anyone who has used it, or something similar to it, in such a way that it leads the public to believe that the goods or services they are being offered are from your business. They do not have to have done this intentionally.
If you win, the court can:
  • Award damages based on your loss.
  • Order the infringer to pay you any profits they made.
  • Order the infringer not to use your mark again.
  • Order the infringer to destroy the infringing products, or hand them over to you.
Costs and timescales
  • Passing off actions are long, complex and expensive. You have to prove that a substantial portion of the public is confused by the passing off, which often involves carrying out a survey and presenting the results in court.
Register your name as a trade mark

You can register your trade mark:

  • At the Intellectual Property Office to protect it in the UK.
  • At the local trade marks registry in other countries to protect it there.
  • At the European Community Trade Marks registry, to protect it throughout the EU as a 'European Community Trade Mark' - one application, one fee.
  • Under the Madrid Protocol, to protect it in all the countries that are signatories to it - one application, one fee.
  • In some countries, registration of a mark in the UK will virtually guarantee local registration.
  • Trade marks are registered in respect of different classes of goods and services. If you use a mark for more than one class, consider registering it in each class. There are 45 classes.
Conditions for registering your trade mark are that it:
  • Must be distinctive for the goods and services for which you register it (ie a card manufacturer couldn't register 'greetings cards' as its trade mark, because those are ordinary words, but it can register 'Hallmark', with its distinctive crown logo).
  • Must not be the same as or similar to any other trade mark registered in that class.
  • Registration of a name as a trade mark means you can take anyone who uses that mark to court.
If you win, the court can:
  • Award damages based on your loss.
  • Order the infringer to pay you any profits they made.
  • Order the infringer not to use your mark again.
  • Order the infringer to destroy the infringing products, or hand them over to you.
  • If you become aware of a trade mark application for a similar name while it is still being considered, you can oppose the registration.
  • You can monitor new applications to spot potential infringers.
  • If the infringer has deliberately counterfeited your mark, you can report them to the Trading Standards Department at your local authority, and the police, who may bring criminal proceedings.
Costs and timescales
  • The Intellectual Property Office aims to register trade marks within 4-6 months. The online application fee is £170 for registration in the first class, and £50 for any subsequent class. You will also incur professional fees. There is a reduced fee if you apply online.
  • You must renew your UK trade mark every ten years. Renewal costs £200. The Intellectual Property Office will send you a reminder.
Register your name as a domain name
  • You can register a domain name for use on the internet, either under a 'country code' top level domain ('ccTLD'), such as .uk, or a 'generic' top level domain ('gTLD'), such as .com or .net.
  • No-one can register an identical domain name under the same top level domain. They can, however, register the same or a similar name under a different top level domain.
  • If an infringer registers a domain name that is similar to your trading name, you can use the relevant dispute resolution procedure to ask that the infringing domain name be removed or suspended from the relevant register, or transferred to you. You do not have to have registered a domain name yourself.
  • If you have registered a trade mark in respect of the disputed name, you will usually win under domain name dispute resolution procedures.
Costs and timescales
  • Some domain names can be registered online in seconds for a few pounds. Others take longer - but they can usually be registered within a few days, for less than £100.
  • Fees and timescales for dispute resolution procedures vary. As a rough guideline, fees for bringing a complaint under the Uniform Dispute Resolution Procedure run by the World Intellectual Property Organisation (which is the most used procedure) are US$1,500 if heard by a single panellist and US$4,000 if heard by three panellists. The procedure takes several weeks.
Register your name as a limited company name
  • If the name you want to protect is not already registered at Companies House, you can register a limited company in that name.
  • Publication of the name on the register at Companies House flags up that you are interested in the name.
  • No-one can register the same name.
  • If someone registers a similar name you can object to Companies House on grounds the name is 'too similar' to your own. If the Registrar of Companies agrees, he will order the other company to change its name.
You do not need to trade through the company - it can be a 'dormant' company. All you need to do to maintain the company on the register at Companies House is:
  • Maintain simple statutory registers showing who the directors, members and secretary of the company are.
  • File a confirmation statement with Companies House (previously known as an annual return).
  • Provide details of people with significant control (PSC).
  • File annual accounts.
Costs and timescales
  • Registering a UK company costs between £100 and £200, including the Companies House fee. It can usually be registered within 24 hours.
  • There is a £12 Companies House fee if the confirmation statement is filed online and a £40 fee if it is filed in paper format.
  • If the company is dormant (ie effectively nothing has gone through its books) you can prepare the annual accounts yourself using the DCA form on the Companies House website. There is no filing fee.

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