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How trademarks work

1. Introduction

A trade mark is a distinctive symbol that your business can use to make its goods and services immediately recognisable to consumers. It is a good way of differentiating your products and services from those of your competitors, and it implies a consistent level of quality or service.

There are several restrictions on what can be registered and protected as a trade mark. This factsheet looks at what is involved in successfully registering a trade mark, both in the UK and abroad.

2. What is a trade mark?

The idea of trade marks was developed in the late 1800s to help established businesses stop competitors stealing their sales and possibly damaging their reputation by imitating their products. A trade mark may be a brand name for a specific product or be representative of the business as a whole. Today, a successful brand name or company logo is a valuable asset to its owner.

The Trade Marks Act 1994 defines a registerable trade mark as 'any sign that is capable of being represented graphically, capable of distinguishing goods or services of one undertaking from those of another undertaking'. This Act also makes provision to harmonise UK law with that of the European Union.

A sign that can be represented graphically is:

(i) A marking such as words, letters and numerals.
(ii) The shape of the goods or their packaging.
(iii) Musical jingles (or even smells).

Other special types of trade marks are:

(i) Certification Trade Marks, which are used to show that items to which they apply possess specific characteristics (such as materials used, place of origin or method of manufacture). The owners of Certification Trade Marks can obtain a monopoly on such marks provided that they do not trade in the goods/services themselves. The owners can also authorise others to use the mark in regard to its specific qualities.

(ii) Collective Marks are marks for use by members of an organisation or association. The Trade Marks Act 1994 also provides for the registration and use of Collective Marks.

3. When is it important to register a trade mark?

Registration of a mark is not compulsory, but it does protect the use of the reputation that the mark represents. By registering a trade mark, your business gets the right to prevent others from using an identical or confusingly similar mark on goods and services that are the same (or similar) to your own.

If your mark is registered, your business can sue for infringement, with its certificate of registration as evidence of ownership. Without this, you would have to demonstrate that a reputation has been established with regard to that mark and that its use by others will damage this reputation.

When registering a trade mark, you will specify the class of goods and services that your business wants to protect; but the legislation allows you to protect the trade mark against confusion with a wider range of goods, including those which may not be similar to your own.

4. What about protecting a trade mark overseas?

Registration within the UK does not give automatic protection overseas, but several schemes allow international registration without having to undertake individual applications in each country. If you think that you may trade overseas, it is worth investigating existing countries' trade marks before investing in packaging and promotional literature that may have to be changed. Note the following:

(i) When a UK application has been filed, the date can be used to establish a priority date within countries party to the Paris Convention, provided this is taken up within six months.

(ii) A UK application can also be used as the basis for an international application within the member countries of the Madrid Protocol, through the World Intellectual Property Organisation (WIPO). This gives protection in the states that are members of the Madrid Protocol, by designating which states are to be covered.

(iii) You can apply for a European Union trade mark from the Office for Harmonisation in the Internal Market (OHIM) in Spain. This gives protection in all 15 member states of the EU, including the UK. Applications can be submitted directly to the OHIM or through the UK Patent Office. Applications are usually submitted directly to OHIM.

(iv) If protection is required in only one or two states, it may be cheaper to make a direct application to the Trade Mark office in each country, as opposed to an EU application.

5. What are the requirements for new trade marks?

The definition of what can be registered as a trade mark was widened in the Trade Marks Act 1994, but a number of conditions still apply. Getting it right first time will save you time and money. A new trade mark must meet the following requirements:

(i) It must be distinct from all existing marks (including those of overseas registers that can claim protection in the UK) and from words and symbols that may be in use in the normal course of trade, or are customary in the current language.

(ii) A mark containing geographical marks or referring to the quality or character of the goods can now be registered, but only if it has become distinctive and associated with that product through use.

(iii) A mark that arises exclusively from the nature of the goods, gives substantial value to the goods, or is necessary to obtain a technical result cannot be registered.

(iv) A mark must not be misleading or contrary to public morality.

(v) A mark containing representations such as the Crown or heraldic symbols is restricted.

(vi) Because of the monopoly granted to the owner, registered trade marks should not consist of words or symbols in common usage or which will unnecessarily restrict other traders' activities, unless it can be shown that the mark has become established as distinguishable through use.

If a mark should be refused registration, Hearing Officers can advise on the amendments that will meet the requirements.

6. What does the registration process involve?

(i) Before making their application, applicants can search the Trade Mark Register at the Patent Office (also available on the Patent Office's website) to see if any existing marks might prevent their mark from being registered. Alternatively, upon application, the Search and Advisory Service will ensure that a new mark fulfils the correct criteria.

(ii) To make an application, a form TM3 must be completed and sent with the fee to the Trade Marks Registry. Applications can be made by an individual or by a trade mark agent; a UK address must be provided for correspondence.

(iii) The Patent Office will examine the application within two months, then applicants have up to six months to overcome any objections or put their application in order. Following this, the new mark will be published in the weekly 'Trade Marks Journal', to allow any objections by others to be raised, before it is entered onto the Register.

(iv) Protection lasts for 10 years from the date of registration, and can be renewed every 10 years, for a fee.

(v) Once a mark has been registered, no changes can be made to the mark itself (except in a few circumstances) so it is important that the description submitted is clear and correct.

(vi) If you have already applied to register a trade mark in a country which is party to the Paris Convention or the Madrid Protocol, you may be able to use the date of that application as the priority date of application for registration in the UK.

(vii) A third party can request a mark's removal from the Register if it has not been used for five years.

7. What does it cost?

Currently the application fee stands at £200, for one class of goods or services, with a further £50 for each additional class under which protection is sought.

8. How is a trade mark enforced?

It is the responsibility of the trade mark owners to uphold the rights afforded by the registration of their trade marks. Any infringements have to be pursued through the courts, inevitably involving specialised legal services and costs; these costs would normally be recoverable by the trade mark owner if the case against the infringement is successful.

9. Domain names and trade marks

In recent years, use of the Internet as a trading medium has grown, resulting in a conflict between the allocation of domain names and trade marks. The Internet Corporation for Assigned Names and Numbers (ICANN) has partly resolved these issues through an administrative system for resolving domain name disputes involving trade marks. These measures have led to fewer cases of 'cybersquatting' of trade marks in the generic top-level domains. Further consultation is now underway to protect intellectual property at the level of the country code in top-level domains.

10. Hints and tips

(i) Before investing in registration, think about why you're doing it. This will help you determine how many classes of goods and services you wish to apply for and whether you will require protection overseas, now or later.

(ii) When designing product names and promotional literature, check what your competitors (or businesses in similar fields) have already registered; this will avoid possible complaints later.

(iii) When using trade marks, the mark should always be displayed in the form in which it was registered, so check that its format is consistent in all usage. The symbol ® should be used in conjunction with the trade mark in countries in which it is registered, and (tm) where it is not.

(iv) Be aware of what is being registered through the Office for Harmonisation in the Internal Market, as those marks have rights throughout the European Union; watch the 'Community Trade Mark Bulletin' for applications. It is also possible to subscribe to a professional watching service so that either the trade mark holder or the client can be notified if a third party tries to register a trade mark, company name or domain name which is confusingly similar to that of the client.

 

Useful Contacts

Patent Office

Copyright Directorate
Harmsworth House
13-15 Bouverie Street
London
EC4Y 8DP
Tel: 0845 950 0505
Website: http://www.patent.gov.uk/
E-mail: enquiries@patent.gov.uk

Institute of Trade Mark Attorneys

Canterbury House
2-6 Sydenham Road
Croydon
CR0 9XE
Tel: (020) 8686 2052
Website: http://www.itma.org.uk/
E-mail: tm@itma.org.uk