Trademarks – a guide for franchisors

What is a trade mark?

A trade mark can be anything which can be represented graphically, distinguishing goods and services of one person or company from another. A trade mark can be words, logos, symbols or slogans. By registering a trade mark, the owner has the legal exclusivity to use the mark in connection with the goods or services for which it is registered. As the registered owner of a trade mark, only you will be able to licence or authorise any franchisee to use the mark. If you choose not to register your trade mark you could risk others using your franchise name and logo to sell (possibly inferior) goods or services, damaging the goodwill and reputation of your business.

The registration process for a trade mark involves making an application to the Intellectual Property Office and paying a fee. They will review the application in line with the law and determine whether it satisfies the criteria for registration. Once satisfied, it will be published in the Trade Marks Journal for two months. During this time, any interested parties may object to the registration. If no objections are raised, then the trade mark will be registered and a certificate issued.

What are the fees payable for a trade mark application?

There are two ways which you can submit a trade mark application with the IPO. The first costs a £170 fee, where an application is submitted with an “all or nothing approach”. This method risks the application being rejected by the IPO without room for amendment. The second approach is called the Start Right method, where the applicant pays an initial £100 fee. The application is first examined by the IPO and the applicant is allowed to make slight amendments to their application. This is then followed by a further £100 fee. However, if the IPO believe that the trade mark application has not met the registration criteria, the application will fail and the applicant must start again.

What can be trademarked? Can only it only be a logo?

Under the Trade Marks Act 1995, a trade mark must be able to be represented graphically, either by being drawn, written in words, numbers or symbols or described in very clear words. It must also be capable of distinguishing the goods and services which the mark represents from those of another. Trade marks which are sounds, scents, and colours have also been approved, such as the famous turquoise shade used on Heinz’s baked beans.

Will my franchise name or logo be capable of being registered?

If you are already using a name for your franchise and are considering registering your logo as a trade mark, then it must be capable of satisfying the statutory definition. However, if you are in the process of starting to franchise and wish to protect it, then you may wish to tailor your franchise name, logo and any possible slogan, in line with what would be accepted as a registered UK trade mark.

Choosing a name for your Franchise

Firstly, you should resist choosing a name which simply describes the products or services being offered and also using words which relate to their quality. It is a good idea to consider names which have no connection with the product or even truly invented words.

For example, an application for “Yummy Cakes” for a bakery franchise is unlikely to stand chance of registration, unless you have an established reputation built up behind the name. However, a way around this could be by combining the name of your franchise along with a logo or graphics. If the “Yummy Cakes” example was accompanied at registration with a unique and creative design, it could give an additional dimension to the design in order to satisfy the distinctiveness criteria for registration.

If your franchise is already established and you are considering registration of your franchise through stylistic logo, it is important to note that all text included on the logo must form part of the trademark text. If your logo includes your franchise name and slogan, then a trademark application will be for the name and slogan together. If it does not, you risk rejection by IPO.

It is possible to trade mark a slogan if it can satisfy the same criteria for registration. Difficulty can arise where the phrase is not distinctive and could be easily used by others. For example, Nestle attempted to register the slogan “Have a break” for their Kit Kat biscuits. This was initially rejected as it was considered to be simply an invitation to have a rest and would not distinguish Nestle’s products from others.

If you are considering registering a slogan for your franchise, a slogan which takes a more imaginative approach to describing your goods or services is more likely to be accepted for registration.