Trade Marking in Aesthetics

By Dr Daniel L Sister and Jemma Patton / 26 Aug 2016

Dracula Therapy trade mark owner Dr Daniel Sister and marketing director Jemma Patton discuss how and why aesthetic practitioners might consider trade marking a treatment, protocol or product for the aesthetics industry

What is a trade mark?

A trade mark is a type of intellectual property protection that helps safeguard your brand. In aesthetics this usually means a product or a specific treatment protocol. A trade mark is different from a patent, which gives an inventor the right to stop others from making, selling or using their invention unless they are given permission.1 A trade mark is also different from copyright, which protects work that is recorded, either in words or sound, such as literary works and music.2

A trade mark – and note in the UK it is trade mark, in the USA it is trademark – allows its ‘owner’ to protect their brand and enables them to take legal action against anyone who uses their brand without permission. It allows exclusive access to the use of the trade mark in the areas you have it registered, or to sell and/or license it for others to use, which can be useful for developing a business.3 In the aesthetics industry, anyone who has created a treatment, protocol, a product, or a piece of equipment (a new piece of equipment would also need a patent) can, in theory, register it for a trade mark. However, it must be distinctive. This means you must be able to prove that it is sufficiently different from any other goods or services. For example, misspelling ‘Coka-Cola’ and trying to trade mark it would not be allowed, as it is too similar to the original. You’ll need to be detailed here – do your research and ensure you can explain how and why your product differs from others in the market.

The appearance of the trade mark must be unique, and it can include words, sounds, logos, colours or any combination of these. It cannot contain offensive words, it cannot describe the goods or service, cannot be misleading, or be too common or distinctive.4

Why register a trade mark?

Having a registered trade mark could make your brand more valuable and give it added credibility and gravitas. You’ll protect your right to exploit, sell and license your own product. You’ll prevent competitors from using your training, research and innovation for their own benefit. Trade marking allows you to put the ® symbol next to your brand, which shows that it’s yours and warns others against using it.5 The TM symbol is used when you have applied for the trade mark but it isn’t registered yet. Although you can continue to use it if you wish to.

What are the boundaries of a trade mark?

A trade mark lasts for 10 years and can be renewed in its final six months. Trade marks are territorial, so only offer protection in the countries they are registered in.9 A UK trade mark covers the UK, whereas a Community Trade Mark (CTM) protects throughout the EU, (whether a CTM continues to offer protection in the UK may be up for debate due to the recent result of the European Union referendum). It is also possible to apply for an international trade mark. You can either file applications in multiple countries, or file a ‘Madrid System agreement’,10 which allows you to extend protection of your trade mark via a single application. However, this can be costly, and only applies to the countries signed up to the Madrid System. It’s best to decide from the outset how much protection you want so that you know which trade marks to apply for.

How to register a trade mark

Your first step should be to check to see if it is already registered. Sometimes, even when we believe we are totally innovative and new, the reality is that someone else may have got there first. Look online for what you want to register by visiting the Intellectual Property Office website, which allows you to do a comprehensive search.6 Once you’re sure it is not already registered, in our experience it makes sense to use the services of a trade mark registration company, such as RevoMark, Trade Mark Direct or Trade Mark Eagle, to name but a few. It is possible to complete the process yourself, but in reality the cost is minimal compared to the amount of work involved, and using a specialist company helps you to avoid potential pitfalls along the way, such as paperwork errors, which cause delays. Many even offer a money back guarantee if for some reason registration proves impossible. Once you’ve submitted an application the registry will check it. It usually takes around three weeks for this to happen. Once it passes the checks it will be published in the trade marks journal, an online journal on the Intellectual Property website which allows for third parties to object to the mark. If no objections are filed within two months (for UK application) or three months (for CTM applications) then your certificate will be issued. In total the process generally takes five to six months. Trade marks are split into ‘classes’, of which there are 45. These classes represent different goods/services that you wish to use the trademark for. Our trade mark for ‘Dracula Therapy’ is within class 44 which includes ‘medical services, hygienic and beauty care for human beings and dentistry services’.7

Do I need to register a trade mark if I already have a company name?

Many people don’t understand why they need to register a trade mark if they already have a company name registered with Companies House. However, they are not the same thing. A company name simply establishes a business as a legal entity, it does nothing to protect the name of your brand. The same goes for domain names; having a website address does not give you any claim over the name of a brand.8

How do I protect my trade mark?

There’s little point in registering a trade mark if you are not prepared to protect it. Many registration companies also offer a ‘trade mark watch’ service, but we chose to take on this role ourselves as we already have a comprehensive social media strategy and we find monitoring the brand name sits easily within this area. The process is fairly simple, but you do need to be constantly vigilant. We have Google Alerts set up to inform us of our trade marked name being used. By using Google Alerts, you receive an email any time Google finds new results on key words you choose. We also monitor social media networks for infringement. It’s best practice to attempt to resolve infringements amicably, but on occasion it is necessary to issue a legal letter. I would suggest hiring a lawyer in order to do this. This doesn’t have to be costly; a lawyer can draw up a template letter on which you can change the relevant details and re-issue. The letter should be issued on headed paper and contain your trade mark number and name – it’s not a legal requirement but best practice and looks professional.

Conclusion

From our experience, registering the trade mark Dracula Therapy has absolutely been worthwhile. We’ve seen our brand grow and have been able to control and restrict its use in ways that benefit us. PRP has many variables, so it’s given us the ability to distinguish our brand from others, to insist on specific training, protocols in treatment delivery and the contents of the kit being used. We would advise anyone considering registering a trade mark to do their research first. Be sure there is not a similar name already in use, be confident that your name is unique and be determined to follow up and monitor the use of your trade mark once registration is complete. 

References
  1. GOV, Patenting you invention, gov.uk, (2016) <https://www.gov.uk/patent-your-invention>
  2. The Copyright Licensing Agency, Protecting creativity, CLA, (2016) <http://www.cla.co.uk/copyright_information/copyright_information>
  3. GOV, Using someone else’s intellectual property, gov.uk, (2016) <https://www.gov.uk/usingsomebody-elses-intellectual-property/trade-marks>
  4. GOV, Trade marks: protect your brand, gov.uk, (2016) <https://www.gov.uk/how-to-register-a-trademark/what-you-can-and-cant-register>
  5. Intellectual Property Office, Trade mark search: by word or image, IPO, (2016) <https://www.ipo.gov.uk/tmtext.htm>
  6. London IP, Trademark Classification, London IP, (2014) <http://www.londonip.co.uk/trademarks/tm-classes/>
  7. GOV UK, Trade marks: protect your brand, gov.uk, (2016) <https://www.gov.uk/how-to-register-atrade-mark>
  8. The Law Donut, Choosing a business name FAQs, Law donut, (2016) <http://www.lawdonut.co.uk/law/starting-up/choosing-a-business-name-faqs>
  9. GOV, Renew your trade mark, gov.uk, (2016) <https://www.gov.uk/renew-your-trade-mark>
  10. World Intellectual Property Organisation, Madrid – The International Trademark System, WIPO, (2016) <http://www.wipo.int/madrid/en/>

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