Trade Marks

Here are some frequently asked questions about Trade Marks.

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What is a Trade Mark?

In the United Kingdom, and through the European Union, a trade mark is "any sign … which is capable of distinguishing goods or services of one undertaking from other undertakings". This definition is very broad, and includes words, logos (or "devices" as they are often called), the shape of goods or their packaging, sounds or even smells.

A commercially successful trade mark should be attractive and relevant to the market in which it is to be used. It should also be distinctive, but not descriptive of the goods or services, so that it may readily be distinguished from competing trade marks.

This latter requirement is very important and easily overlooked in the selection process for a new trade mark. The more descriptive a trade mark is of the goods or services, the more effort will be required to educate the buying public that the trade mark is yours and not someone else’s. If a trade mark is too descriptive, or consists entirely of non-distinctive elements such as a common surname, place name, laudatory terms, or terms that competitors would legitimately be expected to use, then the trade mark may not be registrable, even after many years of use.

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Why should I register a Trade Mark?

Once a trade mark is registered, for example at the UK Trade Marks Registry or at the Community Trade Marks Office , in respect of specified goods or services, then it is possible to stop others using the same (or a similar) trade mark for the same (or similar) goods or services.(OHIM)

A registered trade mark can prevent the registration of a confusingly similar trade mark. For example, the UK Trade Marks Registry can cite an earlier registration against a later application, and an existing registration can also provide a basis for the trade mark proprietor to oppose the later application if this were accepted by the Registry. Furthermore, once an application has been made to register a trade mark, the trade mark details are kept on a publicly available database and can be uncovered in a trade mark clearance search, which may prevent others from adopting the same or confusingly similar trade mark.

Because the UK and most other countries operate a "first to file" system for registered trade marks, it is very important to apply to register a trade mark at the earliest opportunity in case someone else obtains a conflicting registration which would block an application for the trade mark, or which the trade mark would infringe. Registration of a trade mark provides a defence to infringement of another’s registered trade mark. Ideally, an application should be made well before the launch of a product or service bearing the trade mark.

In the United Kingdom and many other common law countries, an unregistered trade mark may only be protected under the common law of passing off. Unlike the statutory protection afforded by trade mark registration, it is necessary to prove that the trade mark has a reputation with associated "good will", and that there has been confusion amongst the buying public. Both of these can be difficult and expensive to prove. In some cases, it may take many years before the trade mark has a significant reputation. In many countries, registration is the only way to protect a trade mark.

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How do I register a Trade Mark?

With few exceptions, trade mark protection must be obtained on a country by country basis. In Europe, however, there is now the Community Trade Mark, which provides a single registration covering all 27 European Union states, including of course the United Kingdom

Trade mark applications at the U.K. and Community Trade Mark Offices are examined and objections may be raised by the examiner. When any such objections have been overcome, the application is published, so that anyone objecting to the application can oppose the application. If no opposition if filed within three months of publication, the trade mark is registered.

A straightforward U.K. application may be registered within a year. However, in the United Kingdom damages for trade mark infringement may be back-dated to the filing date.

If you can register a trade mark, so can others. We strongly recommend that searches are done at an early stage to check that the trade mark has not already been registered by others to avoid wasted expense in an abortive product launch and a writ for trade mark infringement.

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What is the duration of a Trade Mark?

In the United Kingdom and the European Union, a trade mark registration lasts initially for 10 years, after which it may be renewed every 10 years ad infinitum, providing that the trade mark continues to be used for the goods or services for which it is registered.

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What else can Trade Marks do?

A registered trade mark is a commercial tool, which enables you to keep others from benefiting from the reputation, and "good will" associated with your business. However, a registered trade mark is also property that can be licenced, sold or mortgaged to others. Some trade marks can be extremely valuable and in some cases are worth more than all other assets of a business combined.

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Should I consider Trade Mark Watching?

Although it might be thought that ownership of a trade mark registration will prevent somebody else registering the same or a similar trade mark, this is not actually the case. Trade Mark Watching will alert you to the existence of a new application for registration which might conflict with your rights, to enable you to take action early to prevent new rights being granted to a third party.

Although many countries do carry out searches and reject later applications which conflict with earlier registrations, many other countries do not do this and leave it to the trade mark owners to police their own rights. In particular, when a new application for registration is made to the UK or European Trade Marks Registry, the Registry carries out a search but will not reject an application because of an earlier similar registration.

It is therefore possible for a trade mark to be registered in the United Kingdom, or throughout the European Union, even though it is confusingly similar to an earlier registration. Therefore, we strongly recommend that trade mark proprietors subscribe to our watching service that monitors published trade mark applications so that action may be taken to oppose an application for a confusingly similar trade mark.

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