What is a Trade Mark?

A Trade Mark is a sign capable of being represented graphically which is capable of distinguishing the goods or services of one trader from those of another trader.

A Trade Mark can consist of words, designs, letters, numerals, the shape of goods and their packaging (e.g the Coca-Cola bottle), even smells represented graphically by chemical formulae, or sounds, represented by musical notation or description.

A good Trade Mark can be a valuable tool for selling product, giving it an edge over competitors. Easy identification can lead to repeat purchases. Indeed it is often the case that Trade Marks are the principal device by which a business protects its goodwill and prevents misappropriation by others of that goodwill.

A Trade Mark can be registered or unregistered. If unregistered, it may be capable of being protected against infringement by the application of other laws, such as the law of 'Passing off.’ If registered however, the protection open to the Trade Mark owner against infringers is significantly easier to establish and almost always cheaper to obtain.

Trade Mark Registration

To seek registration of a Trade Mark in the UK, application must be made to the Trade Mark Registry to register the mark in any one (or a number) of the 45 recognised classes of goods.

On receipt to the application, the Registry will examine the mark to determine if it is capable of registration, in particular that it is sufficiently distinctive and does not conflict with any earlier applications or registrations. If accepted (either with or without having to deal with objections), the mark is then advertised and objectors have a window of 3 months to object or make observations. In the absence of objection, the mark is registered.

Note however that even after registration, the mark can be challenged as invalid (or be revoked or rectified) if, for example, it has not been used or it has become generic. Famous examples of the latter include ‘Aspirin’ and ‘Escalator’.

Where a challenging party alleges that a mark has become generic, he must show it has become so as a result of the owner’s action or inaction. To guard against the possibility of a Trade Mark becoming generic, owners are therefore well advised to be vigilant in monitoring the market place and the activities of competitors to ensure the mark is not being used on other similar or identical goods. Where it is, immediate Enforcement Action should be taken. Similarly, owners should avoid using the mark as a noun to describe the product or service in question. This is a problem, which has befallen some of the most successful brands. Names which have undergone this process include hoover, sellotape, thermos and terylene.

Protection given by the registration of a Trade Mark in the UK, only protects against infringing activities in the UK, not elsewhere. EU wide protection is available through the Community Trade Mark (‘CTM’) system. Other territories have their own national registration systems. Naturally, obtaining worldwide registrations in each territory is an expensive exercise so applicants should consider carefully which national markets need the protection and where infringements are most likely to occur.

It is desirable to make clear that a Trade Mark is registered and is being used by using the ® sign. Note however that improper use of this sign in relation to an unregistered mark is an offence (unless the mark is registered elsewhere in Europe). Where the mark is unregistered, it is therefore common to use the ™ sign.

Trade Mark infringement

Once a Trade Mark is registered, its use without the consent of the owner may constitute infringement in 3 different sets of circumstances:

1. it is an infringement to use a mark identical to one which is registered on goods or services identical to those for which that mark was registered.
2. it is an infringement to use an identical mark on similar goods or services or a similar mark on identical goods or services, or a similar mark on similar goods or services, and in each such case the use is likely to cause confusion amongst the public with the owners mark.
3. it is an infringement to use an identical or similar mark on dissimilar goods or services to those for which the mark has been registered, where the use would take unfair advantage of the reputation of the registered mark, ie where the mark is famous.

Note that care should be taken if threatening proceedings for infringement of a Trade Mark as in some circumstances, the recipient of the allegation may be able to bring proceedings under s.21 of the Trade Marks Act 1994 against the maker of the threat.

For further advice contact our team direct or talk to your usual contact in the firm