This is a tricky question – and one that is particularly important for businesses who are thinking about using a new brand name.
The main risk of using a brand name before you’ve registered it as a trademark is that you infringe someone else’s trademark rights. If one of your competitors already has a trademark registration for your brand name (or a confusingly similar one), you could find yourself on the end of a trademark infringement complaint!
If you have been using a particular brand name or logo for years before taking steps to register it, and have never received a complaint from another brand owner, you are probably safe to continue using your trademark. But if you’re re-branding or launching a new product or service, it’s a good idea to weigh up the risks before using your new brand name.
Trademark registration is not automatic
Often, having applied for a trademark, business owners expect a quick confirmation that their trademark has been registered, so that like a domain name, for example, they can start using it instantly.But the trademarking process is very different to purchasing a domain name. Unfortunately, registration is not instant.
A trademark application goes through a process of being examined by the IP Office to ensure that the new trademark meets certain standards and does not conflict with pre-existing marks. Once accepted by the IP Office, the application is then advertised so that others have a chance to oppose it. This process takes a minimum of 6 months, and may take longer.
So should you use your trademark during this time while the application is pending?
There is no simple answer. There are risks if you do and risks if you don’t. The good news is that you’ve put your stake in the ground by applying for your trademark – assuming it goes through to registration, your trademark protection will be backdated to the application date. But you do need to understand the pros and cons of using your brand name without a trademark registration and make an informed decision. If you’re unsure, get legal advice.
Before filing your application for your trademark, hopefully you’ve conducted a trademark search. You’ve settled on a brand which is clearly distinguishable from those used by others in your industry, and, ideally, you’ve chosen a highly distinctive trademark. In these circumstances, the risk of you infringing someone else’s rights by using your new trademark is likely to be low.
If you want to play it safe, it would be wise to wait at least until the IP Office has examined your trademark application. At this point, the IP Office either accepts your application or lets you know if they have any objections. You’ll then have a pretty good idea whether your application is going to proceed to registration.
Interestingly, if your trademark application is rejected by the IP Office, sometimes this can be a green light to go ahead and use your trademark! For example, if the IP Office informs you that your brand name is too descriptive or generic, they are essentially saying that the brand should be free for everyone (including you) to use in trade.
However, even if your mark is accepted by the IP Office, there is always a small chance of receiving a trademark opposition. This is why some trademark owners choose to wait even longer to use their new brand name – until they have secured their registration – before spending money on signage, branding and other marketing collateral – just in case.
Read What Makes a Trademark Distinctive?
Use your judgement wisely
You know your industry best – you likely know whether others are using similar brand names and can judge how easy it would be for you to switch direction and adopt a new brand if you needed to. If the risks are high, then it might be best to keep your new brand out of sight until you have secured the trademark protection that you need. That’s when you’ll be able to rely on your registered trademark rights to stop others from copying your brand.If you are unsure of the risks, perhaps err on the side of caution until your mark is registered or get professional legal advice.Once your trademark has been registered, you can use it with confidence and display the registered trademark symbol ® to show that you have taken steps to protect your trademark.
After you have registered your trademark in your home country or the country in which you are currently trading, you might also need to register the mark in other countries too, particularly if you plan to expand into those markets soon.