Introduction to Trade Marks
What is a Trade Mark?
A trade mark is a way of identifying a trader’s goods and services and differentiating them from those of other traders. It is something that is unique to your business and allows consumers to instantly recognise the goods and services that you offer. A trade mark may be a company name or the brand name of a range of products for example.
A trade mark is typically in the form of a word or words, a logo or a combination of the two. However, the shape of a product or its packaging, colours, slogans, sounds and even smells may be registered as a trade mark.
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, and 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 able to be registered, even after many years of use.
Why should I register my trade mark?
A trade mark gives brand recognition and helps guarantee the origin and quality of goods or services. By applying a trade mark to the goods or services that you offer, you can avoid confusion with others in the same line of business and it may help to build brand loyalty.
Registering your trade mark gives you the exclusive right to use the mark for the goods or services for which it is registered. Additionally, having a registered trade mark allows you to take action against another person who is using a mark that that is the same or is confusingly similar to your trade mark.
A registered trade mark may, therefore, be a valuable asset to your business.
Once a trade mark is registered, for example at the UK Intellectual Property Office or at the European Union Intellectual Property 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.
A registered trade mark can also prevent the later registration of a confusingly similar trade mark. 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. This then prevents someone else obtaining a conflicting registration which would block a subsequent application for registration of your trade mark or which your trade mark would be found to infringe. Ideally, an application should be made well before the launch of a product or service bearing the trade mark; however, it is possible to apply to register a trade mark after it has been used for a period of time.
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, under the law of passing off 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.
How can a registered trade mark help my business?
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 of the other assets of a business combined.
Can I protect my trade mark all over the world?
Once you have chosen a suitable trade mark, the next question is where do you need protection for your mark? Depending where you are using, or intend to use, your mark, there are a number of filing strategies that may be considered.
If use of the trade mark is limited to the UK, then it would probably be most appropriate to apply for a UK trade mark registration. This would give you protection against any infringing use of the mark by another person in the UK.
If you are currently using, or intend to use, your mark in other EU countries then it may be preferable to apply for a European Union Trade Mark (EUTM) which gives you protection in all EU countries in a single registration.
Even if you are only using your mark in a couple of EU countries, applying for a EUTM may be more cost effective than separate national applications. However, it is worth noting that in the case of a EUTM, objections to your registration may be raised by earlier marks registered in any of the EU countries. If the objection is upheld, then the whole EUTM would be lost.
If the use, or intended use, of your mark extends beyond Europe, then it is possible to file national applications in most other countries around the world.
If you are likely to want to obtain protection in a number of other foreign countries, then it may be appropriate to apply for registration using an international system called the Madrid Protocol. This allows the filing of a single application to cover a large number of countries, although the examination process is still carried out separately in each country for which protection is sought.
If you are currently unsure as to which countries you may wish to obtain protection in, it is possible to take advantage of a 6 month priority period. This allows you to file a single UK or EUTM application and then file any number of other foreign applications within the following 6 month period. The foreign applications can then be backdated to the filing date of the original application. This allows you to, for example, assess the commercial viability of your product before deciding where to seek protection.