Trade Mark

[AskSYB]

I own a small fashion label stocked through independent boutiques. I’m currently in the process of setting up an e-commerce site to sell my designs exclusively. I’ve been advised to trade mark my label but have discovered that the name is already trade marked by a graphic design company. What do I do?

[sybadmin]

In issue 43 of SYB magazine Mark Kingsley-Williams, Director of Trade Mark Direct replies:
Don’t panic! Just because another company has the same name as you, and they’ve registered it as a trade mark, does not automatically mean you can’t. Two companies can own the same trade mark as long as they are registered for different products. To make sense of what products are similar the trade mark registries operate a system of classes, clothing is class 25 so that’s the one you’d use.

The graphic design company is registered in another class, so your application would succeed. Also they’ve registered the name as part of a logo, so their rights exist in the whole thing, not the words alone. So someone else can register those words with a different logo for a graphic design agency. Our representatives offer free advice on 0845 680 9762. A registered trade mark lasts for ten years before renewal fees are due, and once it’s registered you cannot increase the scope.

So if you have only registered the trade mark for clothing but are harbouring a desire to expand to make-up, then it’s worth applying for that class, otherwise you have to start and fund a second application from scratch. When applying for a trade mark, it’s also a good idea to think about the long-term plans for your business e.g. do you plan to expand oversees? If so a Community Trade Mark covers all 25 EU countries, including of course the UK, although it’s about triple the UK price.