What Is a Trademark?

Many business owners confuse company names, domain names, and trademarks — assuming that registering one automatically protects the others. It does not. Understanding the difference is important before you invest in a name for your business.

The Definition

A trade mark (spelled as two words in UK law, though "trademark" is widely used interchangeably) is a sign that distinguishes the goods or services of one business from those of another. It gives the owner the exclusive right to use that sign in connection with the goods or services for which it is registered.

In the UK, trade marks are registered with the Intellectual Property Office (IPO) and are governed by the Trade Marks Act 1994.

What Can Be Trademarked?

Almost any sign that is capable of being represented graphically and that distinguishes your goods or services can potentially be registered as a trade mark. This includes:

What a Trademark Cannot Be

Not everything can be registered. The IPO will refuse an application if the sign:

• Is descriptive of the goods or services (e.g. "COLD" for ice cream)
• Is generic — the common name for the product in the industry
• Is devoid of distinctive character — too simple or commonplace
• Is deceptive — misleads consumers about the nature of the goods
• Is contrary to public policy or morality
• Conflicts with an earlier trade mark for the same or similar goods

Trademark vs Company Name: A Critical Distinction

Classes of Goods and Services

Trade marks are registered in specific classes under the Nice Classification system (there are 45 classes in total — 34 for goods, 11 for services). You only hold rights in the classes you register for.

For example, registering "APEX" as a trade mark in Class 25 (clothing) does not prevent a different company from using "APEX" in Class 41 (education services) — if they applied and were granted registration in that class.

This is why it is important to register in the right classes from the outset. Adding classes later means filing a new application and paying additional fees.

The ™ and ® Symbols

Why Register a Trade Mark?

Without a registered trade mark, you have limited protection. You may be able to bring a claim under the common law tort of passing off — but this requires proving an established reputation and actual damage, which is difficult and expensive.

With a registered trade mark, you can:

• Sue for infringement without needing to prove reputation
• Licence or sell the mark as a commercial asset
• Apply to have infringing domain names transferred via UDRP proceedings
• Notify customs to seize counterfeit goods at the border
• Use the ® symbol to deter potential infringers