Trademarking your business name, logo and taglines is a great way to stop your competitors from copying you. You work hard to build your business and get your brand out there. However, it can be a minefield. Read on and we will explain why.
In light of a recent case, whereby an appeal was withdrawn by the Manuka Honey Appellation Society of New Zealand against the UK Intellectual Property Office. We thought it relevant to talk about trademarking in this blog.
In December 2017, the UK Intellectual Property Office approved the registration of a certification trade mark for Manuka Honey. The applicant – The Manuka Honey Appellation Society Incorporated. The basis of the application was to certify their right to the manuka certification term as it originated from a Maori word. Therefore, it should only be used for honey produced in New Zealand.
The case was opposed by the Australian Manuka Honey Association. The basis of the opposition was that:
- The trade mark describes the kinds and other characteristics of the product
- The trade mark is a generic word in the honey industry used to describe honey made from the Manuka tree
- The trade mark doesn’t qualify as a certification trade mark
- The trade mark is not capable of distinguishing honey produced in New Zealand from the Manuka tree from any honey made outside New Zealand
The UKIPO then denied approval for registration of the applicant’s trade mark for Manuka Honey. This was on the grounds that the term has become a descriptive term in the honey trade. Furthermore, Manuka honey is native to both New Zealand and Australia.
How to trademark a phrase
And whilst you can apply for a trademark yourself, there are simply some things that aren’t registrable. We have seen an increasing trend in businesses wanting to trademark slogans, hashtags, phrases and taglines. Whilst this is possible, it’s not straightforward.
Here’s some important information we wanted to share.
Whether you’ve come up with a phrase, a tagline, a slogan, or a catchphrase to help identify your business, trademarking it is the best form of protection. However, there are many things to consider. A lot of words are difficult to protect and therefore not everything can be trademarked.
For instance, common sayings or catchphrases may be denied approval for registration by the trademark office. So, if you want to increase brand recognition by using a motto, a catchword, a tagline or a phrase, you have to make sure they are distinctive and prove you were the first one to use them.
Take a look at the following and keep in mind that your slogan or a phrase will only get trademark protection if:
- It is unique and is not already trademarked;
- It doesn’t state the production time or the location;
- It doesn’t describe your company’s products and services; and
- It doesn’t define the purpose of your product, its quality or its value.
You can search the trade mark database to see if anyone else has protected the word or words you want to trade mark. You can do this at the UK Intellectual Property Office. However, this doesn’t show if someone else is using the mark unregistered. You have to do some thorough research to check if there are other conflicting trade marks.
If you are seeking to register a trade mark in the UK, you should first complete form TM3 online. Then pay the required fee and send your application to the Intellectual Property Office. If nobody opposes your trade mark, you should receive your certificate of registration three months after application.
Takeaway
Remember when trademarking, the words must to be as original and unique as possible. Therefore, avoid using generic words and phrases. If you want to register a certification trade mark, your trade mark should be able to distinguish certified goods from non-certified ones. If you need more information on registering and protecting trademarks in the United Kingdom, please contact us or book a 15-minute virtual consultation via Zoom.