This guide was last updated in March 2008
What is a trade mark?
A trade mark is defined as:
"Any sign which is capable of being represented graphically
which is capable of distinguishing goods or services of one
undertaking from those of other undertakings. A trade mark may, in
particular, consist of words (including personal names), designs,
letters, numerals or the shape of goods or their packaging."
In essence, a trade mark can be anything, which distinguishes
your business from those of other traders. A trade mark may be a
word or combination of words, it may be a logo, it may be the shape
of your products or their packaging, it may be the colour you use
to promote your goods and services, it may be a musical composition
used in advertising. As long as your trade mark is capable of
distinguishing your business from other traders or does distinguish
your business from other traders (either inherently or through use
over the years) then your trade mark acts as 'a badge of origin'
and is protectable.
How are trade marks protected?
In the United Kingdom, trade marks are protected in two main ways.
- Trade Marks, or more precisely the goodwill associated with the
business conducted under the trade mark, is protected via the
common law tort of 'passing off'. If you can prove that you have
established, via the use of the trade mark, 'goodwill' in the
business associated with that trade mark, then this goodwill is
protectable. Goodwill is essentially a reputation in the mark.
If another trader 'passes off' his goods or services as being
yours and misrepresents in some way, either deliberately or
innocently, that his goods and services are yours or you are in
some way connected to him or you have endorsed his goods and
services, then if you can show that you have or are likely to
suffer damage as a result of such use, you will have a remedy in
passing off.
- Trade Marks are also protected via statutory protection under
the Trade Marks Act 1994. Trade Marks can be protected by
registering the trade mark at the UK Trade Marks Registry. A
registered trade mark in the United Kingdom is infringed by the use
of the same or similar sign in relation to the same or similar
goods and services for which the trade mark is registered.
Trade Marks can also be registered in foreign countries such as
the United States and Canada and across the whole of the European
Union via a so-called 'Community Trade Mark'. There are also
various trans-national Trade Mark Registration systems such as the
International system known as The Madrid Protocol (See: Registering a trade mark through
the Madrid Protocol).
Why should I register a trade mark?
The problem with relying on passing off in the United Kingdom is
that you have to first prove that you own goodwill in the business
conducted under the trade mark. Also, by definition, passing off
rights are limited to the particular geographical location within
which you trade. If you have only traded in Somerset and you are
only known in Somerset, your passing off rights will be limited to
Somerset.
By contrast if you register a trade mark, there is a presumption
that the trade mark registration is valid. Also if you register
your trade mark as a United Kingdom Trade Mark Registration, your
rights will cover the whole of the United Kingdom. If you register
your trade mark as a Community Trade Mark your rights will extend
to the whole of the European Union, even though you may only
actually trade in a limited locality at present.
Outside the United Kingdom, rights to trade marks are often only
achieved via registering the trade mark. In many countries, the
proprietor of a trade mark is deemed to be the 'first to file' not
the 'first user' of the mark. Therefore, it is important to obtain
registered protection before someone else does.
Do I need to register my trade mark?
No, but for the reasons given above it makes good sense to register
your trade mark. However, you do not have to register a trade mark
to use it. Trade Mark Registrations are designed to stop others
using the mark and are not a pre-requisite for your use. However,
it is possible that if you do not register your trade mark, other
traders could stop you using your mark at a later date. Also, even
if you decide not to register your trade mark, you should conduct a
search to determine if others have already registered the same or
similar mark and thus could prevent your use of the mark.
What should I do when I have chosen a trade mark?
You should first conduct a search in the country or countries where
you are to use the trade mark to determine if any others have
registered the same or similar trade mark first and thus could
prevent your use of the trade mark. Then, if the search is clear,
you should register the trade mark to help prevent other traders
using the trade mark.
How do I register a trade mark?
A trade mark is registered by filing a trade mark application at
the Trade Mark Office of the country or countries where you wish to
trade. Trade Mark applications can take between six months and
a number of years to register. Trade Mark Registrations are
generally renewable every 10 years, but in contrast to registered
design and patent protection, trade mark registrations can be
maintained indefinitely.
How much does a trade mark application cost?
The cost of registering trade marks varies from country to country.
The cost of a trade mark application also depends on the breadth of
goods and services covered by it. All goods and services are
classified into
45
classes. The more classes covered, the higher the cost of
filing.
How can Pinsent Masons help?
Pinsent Masons has a dedicated Trade Marks & Designs Team,
which consists of qualified Trade Mark Attorneys. We can file and
prosecute trade mark applications across the globe and conduct
searches on potential brands and advise on risks to use in terms of
infringement.
For more information please see our Trade Mark & Design Services
Guide or contact us by email at trademarks@pinsentmasons.com
or on 0113 244 5000.
