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Trademark

A Trademark is a sign which can distinguish your goods and services from those of your competitors (you may refer to your trade mark as your "brand"). It can be for example words, logos or a combination of both. The only way to register your trade mark is to apply to The Intellectual Property Office.

Introduction

A trade mark is a sign which acts to distinguish the goods and services offered by one undertaking from those offered by other undertakings.  Trade Marks are often seen as the badge of a business.  A Trade Mark can be a very powerful marketing tool as it enables customers to recognise your business for the quality of its products or services.

A trade mark can be:

  • A word, slogan or phrase
  • A symbol or visual logo
  • A smell
  • The shape of the goods, the visual get up or packaging
  • A sound or jingle
  • A colour
  • A company name

The options for protecting a Trade Mark

Within the United Kingdom there are a number of co-existing systems which provide protection:

Passing Off:

This is a common law tort which acts to protect the goodwill which a trader has acquired in a mark through use.  This protection arises automatically through use of a mark in commerce.  This protection is acquired without cost to the owner.  However, it can be a very difficult right to prove and enforce against third parties using a similar mark.

Registration UK:

An application can be filed with the United Kingdom Intellectual Property Office to register a mark in relation to a specific goods and or services.   Essentially this is a formal request to be granted a monopoly in relation to the use of this mark in respect of the goods and services cited in the registration.  Generally an application will be rejected if the mark is; not distinctive; descriptive of the cited goods and or services, a generic term or the mark is deceptive.  Third parties have an opportunity to object (Oppose) to the proposed registration of the trade mark.

Registration EU:

An application can be filed for a Community Trade Mark (CTM).  This is a unitary system whereby a single application is filed in respect of the entire EUR geographical area.   A CTM will enjoy protection in the UK by virtue of our membership of the EU.

Correct Marking

In most circumstances it is advisable to make third parties aware that the Trade Mark in question is considered to be proprietary right which functions as a trade mark.  The symbols vary according to the type of protection.

  • An unregistered mark can be accompanied by the TM symbol.
  • Registered marks are entitled to use the ® symbol.  It is an offence to use this symbol in relation to marks which have not been registered.  The symbol cannot be used if the application to register the mark is still pending.

Vigilance

As noted above Trade Marks can be a very important asset.  Despite the different options for protection of a Trade Mark it is left up to the proprietors to ensure that their rights are not infringed.  Use by a third party can lead to damage to the reputation of the trade mark and also to a loss of sales.  However, if this use is left unchallenged it is possible for the third party to accrue rights in the mark such that, after a period of time, it may not be possible to prevent their use of the mark.

Duration

In contrast to the other Intellectual Property Rights trade marks can be protected indefinitely.  This is true of both common law rights and registrations.  A registration once granted will enjoy protection for 10 years.  The mark can then be renewed for further 10 year periods.