A trade mark is usually a word or logo or a combination of both, used to distinguish the product or service of a particular trader. Since 1994, distinctive smells, sounds and 3-dimensional shapes may also be registered. A trade mark may be registered for existing products or services to protect the goodwill and reputation earned in the past, or it may be for creating a new image for a new product or service.
The definition of a trade mark is any mark which
(a) can distinguish between the goods and services of one trader from the goods or services of another
(b) can be represented graphically.
Trade marks are registered in respect of one or more classes of goods or services. In the UK trade marks are registered by the Intellectual Property Office.
Which words cannot be used?
A trade mark must be distinctive. It must not just be a description of the goods or services covered by the application, nor must it be a word which another trade may legitimately wish to use in connection with their own goods or services, for example, one could not register ‘sharp’ for knives. Similarly a device or logo which happens to be common to a particular trade would not be registered as a trade mark. For example a barber’s pole would not be registered in connection with hairdressing services.
Also, it is not possible to register a mark which is very similar to an existing mark, as this could lead to confusion, or one which is deceptive or suggests connection with the Royal family or uses the union jack or other official flags or symbols, or certain sensitive words.
Why carry out a trade mark search?
A trade mark search is carried out to discover whether a proposed name or logo is already registered. The registration of a trade mark means that the owner has the right under the Trade Marks Act to enforce the exclusive use of the mark in respect of the class of goods or services in respect of which it is registered. This entitles the owner to take action for infringement against anybody who makes use of the same or a confusingly similar mark for the same or similar products.
A trade mark search can (and often should) be carried out even if there is no intention to register a trade mark and is often done when a new company is formed. When a limited company is formed a search is always carried out to check that the proposed name is not already registered with the Registrar of Companies. However, the proposed company name may be the same or very similar to a registered trade mark. A trade mark search gives a broader picture of words and logos already registered. This may prevent unintentional infringement of an existing mark and the possible consequences of being sued, or having to abandon a company, business, or brand name, with all the inconvenience and expense this might entail.
Why register a trade mark?
Subject to any earlier rights which may be established, registration of a trade mark gives the owner a right to exclusive use of the mark in respect of the goods or services registered. The owner can sue for infringement of his registration if someone else uses the same or a similar mark on the same or similar goods or services. Large sums of money may be spent on designing and advertising a particular product and mark. Unauthorised use of that mark may mean the rightful owner losing business and goodwill.
If the trade mark is not registered then one may seek redress through the courts under common law in a “passing off” action. This is a much more complicated procedure. Firstly, the owner must establish that the mark is associated with his goods or services in the mind of the public. He must then persuade the court that the mark used by the other party is likely to cause the public to assume that the goods and services of the other party could be mistaken or associated with those of the owner, and that this will cause damage to his trade.
If, however, the mark is a registered trade mark it is a much simpler action. To sue for infringement under the Trade Marks Act the owner only has to show that someone else has used a mark the same as or similar to that of the owner’s on goods or services that are the same or similar. If a successful action is brought, the owner of the mark may be entitled to damages, an injunction to stop the unauthorised use of the mark and the distribution of goods which infringe the mark and/or a claim to the profits made by its infringement. In certain circumstances the deliberate use of a registered trade mark on goods, by another person and without the owner’s knowledge, may be classed as counterfeiting. This is a criminal offence.
The identity of a business and its brand name are important assets. When a business is sold, the fact that its name, and any brand names it uses, are registered as trade marks, can be important to reassure the purchaser that these important assets are protected. Indeed, a valuable trade mark and the rights under it can, in some cases, be sold as separate, identifiable assets.
Who may register a trade mark?
Any trade mark owner, whether a British subject or not. The mark must be used or proposed to be used in the United Kingdom.
Can a trade mark be registered in other countries?
Yes. A European Community trade mark can be registered at the office for harmonisation of the Internal Market in Alicante. This will provide protection in all the countries of the European Union including the UK. If trade mark protection is required in a number of the countries of the European Community, registration of the Community Trade Mark may be the cheaper and most effective option, giving protection throughout the EU. The difficulty, however, is that if the mark is found unacceptable in one EU country, then the application will be refused completely.
A trade mark can also be registered in other countries both within and outside the European Union. One application can cover a number of countries under the Madrid Convention. In most countries the procedure and classification of goods and products are similar to those in the UK, though the detailed rules and registration procedures and costs vary from country to country.