Get to the front of the queue to register your name as a trade mark

 

If you are considering protecting your name as a trade mark, do not delay in making the application. The reason is that the trade marks registry operates a first to file principle. That means that the first person to file an application to register a name will have an advantage over anyone seeking to do so subsequently. 

 

                                                  

Historically, if a surname appeared more than 200 times in the London telephone directory it was deemed too “common” to be registrable as a UK trade mark. Businesses operating under such names had to rely upon evidence of acquired distinctiveness (i.e. an established reputation) to allow them to register.

Under the new rules, it will remain the case that the more common the surname, the more difficult it will be to register. However there will be no bar to registration simply on the telephone directory test.

We are often asked how companies using common names such as JONES (the boot maker) or GEORGE are able to register their trade marks. The reason is that they applied for those marks after they had an established reputation in their sector. This is known as “acquired distinctiveness”.  The risk for a new business of waiting until it has acquired a reputation is that someone may get in first with their application for the same name.

 

                                          

An alternative approach is to add an element of distinctiveness to the name by incorporating it into logo or in a stylised format. An application can then be made to register the logo or stylized form. It is not uncommon to see designers seeking to register their handwritten signatures as trade marks (e.g. Jeff Banks).

One final point. A trade mark owner cannot prevent other people from using their own names in connection with their business even though they are the same as a registered trade mark. This is an exception to the general rule that a trade mark owner has a monopoly over the use of the trade mark in the field for which it is registered. The ability to use your own name exception only applies where the use of the name is honest i.e. it does not seek to take advantage of a registered trade mark.

Nick Fenner

Fladgate Fielder.

This is not intended to be a complete summary of the law and you are recommended to seek professional advice before taking any action.