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Home » Awareness » Pre Trading » Why register a trademark?

Why register a trademark?

A trademark registration is an intangible asset that adds value to a business. Failure to register a trade mark could have negative implications on the value of a business in the event of a business sale. It can also cause problems in the event of any merging, licensing or franchising of the business, or in attracting investors. Unregistered marks are often "deal killers" when negotiating with third parties. 

Registering a trade mark costs money and you need to get it right. But registration establishes in law that your mark is a trade mark and belongs to you alone. Trademark registration entitles you to prevent competitors from using or registering an identical or confusingly similar mark. You then have an automatic right to sue anybody who infringes it. In fact, just registering a trade mark can serve as a deterrent to people who might otherwise infringe it.  

Very little protection (and absolutely none if there is no reputation) is given to an unregistered trade mark as one has to rely on a common law action of ‘passing off’  (as opposed to statutory rights) to prevent another entity trading under or using an identical or similar name. To be successful in a ‘passing off’ action, you must prove that:

  •  the mark is yours
  •  you have built up a reputation in the mark
  •  you have been harmed in some way by the other person's use of the mark. 

In practice it is usually extremely difficult to reach the standard of proof required and as a result few ‘passing off’ actions are successful. The reality is that for most small to medium sized businesses there will be no protection.  Also, by definition, passing off rights are limited to the particular geographical location within which you trade. If you have only traded in Edinburgh and you are only known in Edinburgh, your passing off rights will be limited to Edinburgh.  

By contrast if you register a trade mark, there is a presumption that the trade mark registration is valid. Also if you register your trade mark as a United Kingdom Trade Mark Registration, your rights will cover the whole of the United Kingdom. If you register your trade mark as a Community Trade Mark your rights will extend to the whole of the European Union, even though you may only actually trade in a limited locality at present. However, you do not have to register a trade mark to use it. Trade Mark Registrations are designed to stop others using the mark and are not a pre-requisite for your use. However, it is possible that if you do not register your trade mark, other traders could stop you using your mark at a later date. Also, even if you decide not to register your trade mark, you should still conduct a search to determine if others have already registered the same or similar mark and thus could prevent your use of the mark.


Nothing in this awareness article is intended as legal advice. If you have a specific legal requirement or query you should consult a solicitor directly.