Common misconceptions about trade marks 2.0

In our previous article, Common misconceptions about trade marks, we covered some of the most frequent misunderstandings businesses encounter when it comes to trade marks, including believing that registering a company or domain name offers the same protection as a registered trade mark. But those are just the tip of the iceberg.

Here are five more common misconceptions about trade marks and what you should know instead.

1. “If I register a logo, I’m covered for the words too.”

Many businesses believe that registering a logo automatically protects the words within it. However, this is only partially true.

If you register a stylised logo that includes your brand name, your protection typically extends to the logo as a whole, not necessarily the word element in plain text. This means you might not be able to prevent someone from using the same or similar wording in a different font or layout.

If the words themselves are distinctive and important to your brand identity, it’s often advisable to register both the word mark and the logo separately, to ensure the broadest protection. 

2. “Once I’ve registered my trade mark, this will automatically stop others from using or registering my brand.”

It’s a common assumption that registering a trade mark means the trade mark office (which in the UK is called the UKIPO) will proactively monitor and block any similar or identical trade mark applications, or that infringers will automatically be stopped. Unfortunately, this isn’t how it works.

Registering your trade mark gives you the right to take action against a conflicting third party, but it doesn’t mean the trade mark office will enforce those rights on your behalf. In certain jurisdictions, such as the US, trade mark offices do have powers to refuse applications they deem to conflict with existing applied-for trade mark rights. However, this is the exception rather than the rule, and it generally does not extend to preventing unauthorised use.

You, as the trade mark owner, are responsible for monitoring new applications and enforcing your rights against infringers or conflicting filings.

This is why many businesses rely on trade mark watching services to monitor relevant trade mark registers to help spot potential conflicts early. This can not only help deal with conflicting applications, but can be important in helping ‘head off’ potential trade mark infringement issues, either at an early stage or before they actually arise.

3. “Once I have my trade mark registered, it is automatically protected forever.”

While it is true that registered trade mark protection can last indefinitely, this depends on meeting certain renewal and use requirements.

In the UK (and most other jurisdictions), trade mark registrations must be renewed, by paying the renewal fee, every 10 years. More importantly, you need to actively use your trade mark as registered for the goods/services covered. If you stop using it or cannot prove genuine use when challenged, the registration may be vulnerable to revocation on the basis of non-use.

Moreover, in certain jurisdictions (such as the US, Philippines, Mexico etc), trade mark owners are required to periodically submit declarations confirming that they, or a third party with their consent, are using the trade mark as registered for the registered goods/services.

For these reasons, if you update or revamp your trade mark after registration (for example, by changing your logo or brand style) it is advisable to register the revised version to ensure your protection remains effective and up to date.

So, while trade marks can be valuable long-term assets, they are not automatically permanent, needing maintenance and use to remain effective and enforceable.

4. “Registered trade marks are only important for ‘big’ companies.”

Startups, sole traders and small businesses often believe registered trade mark protection isn’t necessary until they have grown and reached a certain size. However, delaying trade mark registration can be risky.

Many territories operate under a first-to-file system, meaning trade mark rights are granted based on who first registers the mark, not who used it first.

 This can be significant, as it could mean that if a third party (such as a competitor) files to register an identical or similar trade mark first in a given territory, they could prevent or at least hinder you from trading in that territory under that mark there, even if you have been using it previously!

Registering your brand name and key trade marks early (ideally before you even begin using them) helps mitigate this risk, gives you earlier legal rights, and provides confidence in your brand and business as you grow.

5. “I’ve paid a design agency to create my logo, so I own the copyright.”

This is a common (but understandable) assumption. Many businesses believe that once they’ve paid a designer or design agency to create a logo, they automatically own the rights to it, including copyright. However, this isn’t always the case. Failing to clarify ownership from the outset can lead to legal complications and limit your ability to fully control or protect your brand.

Under UK copyright law (and in many other jurisdictions), the default position is that the creator of the work, such as the designer or design agency, is the legal owner of the copyright, even if you commissioned and paid for the work. Unless there is a clear, written agreement assigning the copyright to you or your business, those rights remain with the original creator.

Without this transfer, you could face difficulties enforcing your rights or even continuing to use the logo if the relationship with the designer breaks down. In some cases, designers have waited until a logo becomes an established part of a business’s brand identity before demanding additional fees, or even threatening to withdraw permission for its use.

This is, understandably, a situation no business wants to face, particularly when the logo is a central part of its branding and public image.

Therefore, remember that paying for design work does not automatically give you ownership of the underlying intellectual property. To ensure your business truly owns what it has paid to create, always make sure a clear, written copyright assignment is in place from the outset.

Conclusion

Trade mark protection is often more nuanced than many businesses realise. 

Misunderstandings about what a trade mark registration covers, how rights are enforced, or who owns the IP behind your brand can lead to costly mistakes. By understanding these common misconceptions and taking proactive steps (like registering early, monitoring for conflicts, and securing proper ownership agreements) you can build a stronger, more confident foundation for your brand.

If you have any questions with regards to this article or how Swindell & Pearson can help you and your business with intellectual property, please don’t hesitate to get in touch with the author Joe Tedd or call +44 (0)1332 218 300.