When you are establishing your business, it is crucial to consider how your brand is to be presented. For this to be successful, a new business or invention should have a trade mark.
What is a trade mark?
A trade mark can be defined as any visual sign which can be:
- Represented and recognised graphically.
- Distinguished from the services or goods provided by another company.
From this conclusion, it becomes clear that a trade mark attaches the history and reputation of the business that it is representing. Although trade marks are usually thought to solely protect words and symbols, a trade mark can also be:
- The shape or packaging of the goods.
- A specific colour.
- Even sounds and smells.
However, to qualify for registering these qualities as a trade mark, the product must be distinctive and must also refrain from being simply descriptive of the product or its services.
If a mark solely consists of signs or symbols that reveal the quantity, kind or location of the goods/services, the mark will not be registered. Consequently, if it is descriptive, there is a slim likelihood that the trade mark will be registered.
The marks that are most likely to be successfully registered are words that have been invented for purpose or words that have no direct association with the business, excluding the links forged by the branding. In rare circumstances where there is a clear public trend of association, non-distinctive and descriptive marks may be used. These situations occur when a long-term association can be proved.
Procedure for Protection:
In order to gain a trade mark, you must apply to register it at the UK Intellectual Property Office. The applications are specific to what goods or services you are providing and will be included on the form.
At this stage, you should expect the owners of earlier registered trade marks, or other yet unregistered trade marks, to object to your mark and the application for it. This is far more likely to occur when the trade mark bears similarity to a pre-existing one belonging to a competitor. It is therefore considered prudent to ensure that you are familiar with the competition in order to properly assess the risks associated with an application.
The proprietor of a registered trade mark has the exclusive right to use the trade mark in connection with the goods and services for which it is registered. The owner of a registered trade mark may use the ® symbol, to use the symbol without a registered trade mark is a criminal offence. Having ownership of the mark enables the right to prevent others from using the same or a similar trade mark in commerce.
If another company sells, imports, exports or advertises goods or services with a similar mark, it could constitute “infringement” of a registered trade mark. The owner of the trade mark registration is entitled to take legal action to stop others from doing anything that is an infringement of their registration.
Trade mark infringement occurs when:
- A mark is identical to an earlier registered trade mark in relation to identical goods or services.
- An identical mark which is in relation to similar goods or services and therefore entertains the possibility for confusion with the earlier mark in the minds of the public.
- A mark which is similar to another in a similar trade and service and there exists a likelihood of confusion with the earlier mark in the minds of the public.
- A mark that seeks to take unfair advantage of or be detrimental to an identical or similar earlier registered trade mark without cause.
- A mark which should be legally prevented, or in considering the rights of earlier trademarks.
Duration: A trade mark can be registered indefinitely; the initial period of protection lasts 10 years and renewal fees can be paid every 10 years thereafter.
Resolving an Infringement:
If your trademark is exploited by a third party, you can:
- Obtain an injunction to prevent any further infringements.
- Seek compensation for the infringing activity such as:
- Damages for loss of earnings: Usually based on the value of royalties for their use of the mark.
- A record of the profits made by the user in the time they used the mark.
- Handing over or destroying anything upon which the mark is produced.
To Avoid Exploitation:
- The registered owner of the trademark can transfer the rights to or grant a licence to a third party to do the above acts legally.
- These assignments must be recorded and signed in writing by or on behalf of the registered owner or one with the authority to transfer for it to be valid.
- A formal licence agreement ensures that each party involved is assured and can prove its validity in future.
If you wish to make your mark internationally your own, it may be possible to submit an application to the Office of Harmonisation in the Internal Market to obtain a Community Trade Mark (CTM) which is valid across all EU Member States.
For a more global reach, The Madrid Protocol currently facilitates the filing of a single application to register your trade mark in 91 signatory states, including the UK.
If a trade mark is not registered, it can be protected under the common law of passing off. If a third party does use your mark and it is unregistered you must act.
To prove this, you must:
- Show goodwill towards your mark and prove its reputation.
- Show the damage caused by the misrepresentation of your mark.
- For this, you must show that the third party has made these false representations have confused the public into thinking that their goods or services are connected to or are in fact your own.
To avoid such confusion in the future, the surest solution is to seek legal advice. From this, you can determine whether you need to make steps to acquire a trade mark. If you need to protect your mark, Stirling Ackroyd Legal, can provide you with the support and guidance you need.
If you need legal advice regarding trademarks, call us today on 0203 058 3365 or email us at our enquiries page
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