What is a trade mark?
A trade mark is a sign used to distinguish the goods and services of one undertaking from those of another.
In other words, a trade mark enables consumers to identify goods or services as originating from a particular company or relating to a certain product or service.
Typically trade marks take the form of words or logos though it is possible to protect more unusual forms of trade marks such as colours, slogans, shapes of products or packaging, sounds, motions and even smells
Trade marks may be registered or unregistered. Registering trade marks usually offers the best protection (see below) but unregistered trade marks can be enforced in certain circumstances under the law of passing off.
Registering a company name at Companies House does not provide trade mark protection for that name. If a person registering a company name wishes to prevent third parties from using an identical or confusingly similar name in the course of trade, it is important to file a separate trade mark registration to better protect the name.
Likewise, a domain name registration alone will not enable the registrant to prevent others using the name in another context, in the absence of registered or possibly unregistered trade mark rights.
It is advisable to underpin a domain name registration with a trade mark registration to maximise protection and scope for enforcement.
Registering a trade mark
The owner of a registered trade mark has, broadly speaking, exclusive rights to prevent others using the mark without their consent, subject to certain considerations.
Enforcing registered rights is generally more straightforward and less costly than enforcing unregistered rights.
It is therefore advisable to register as many aspects of a brand as possible – at least the name and/or logo. The idea for any business owner should be about layering up on their Intellectual Property portfolio, meaning if they have any specific product names or slogans, these should also be considered to register as trade marks during the lifespan of the business.
Key issues to consider when selecting and registering a mark are set out below.
Trade mark rights are territorial in nature which means they take effect only in the jurisdictions in which they are registered.
Accordingly, brand owners have to think carefully about the territories in which they require protection—this may be in jurisdictions where goods are manufactured as well as where the goods are marketed and sold.
Trade mark protection in the UK - post-Brexit
The most significant impact of Brexit is that, from the end of the implementation period provided for in the Withdrawal Agreement, the UK is no longer subject to Regulation (EU) 2017/1001, and EUTMs are no longer protected in the UK. Accordingly, it has been necessary to address this potential gap in protection in the Withdrawal Agreement and by putting in place appropriate domestic legislation.
Application and registration process
The application and registration processes for the forms of registered trade mark protection referred to above are set out below. While the systems and timelines between territories differ slightly, each application must include:
- name and address of the applicant
- a representation of the mark, and
- a list of the goods and services to be covered by the trade mark along with the official filing fee:
UK trade mark registrations are registered at the UK Intellectual Property Office (IPO) under the provisions of TMA 1994.
Choosing a mark
In order to be registered as a trade mark, the sign must be ‘capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor’ and able to distinguish the goods and services of one undertaking from those of another.
There are a number of ‘absolute grounds’ upon which a trade mark will be refused registration.
Therefore, when selecting a trade mark, consider the following:
- the trade mark must be distinctive – the more distinctive a mark, the easier it is to register and protect. Strong trade marks are often made up words such as SKYPE or GOOGLE
- the trade mark must not be descriptive eg it must not describe characteristics of the goods or services relating to the mark. On that basis, the marks APPLE or ORANGE would not be acceptable in relation to food products but are registrable in relation to unrelated goods and services such as computer hardware, IT services and telecommunications
- the trade mark must not be something that has become customary in the established practices of the trade in question (eg the use of the name VASELINE for petroleum jelly)
- the trade mark must not exclusively comprise the shape or other characteristic: which results from the nature of the goods themselves; which is necessary to obtain a technical result; or gives substantial value to the goods. For example, a standard mineral water bottle would not be registrable as a mark
- the trade mark must not be deceptive or offensive, contrary to public policy, illegal or inclusive a protected emblem, or contrary to laws protecting designations of origin, geographical indications, the protection of terms for wine or traditional specialities, or the protection of plant variety rights.
Selecting goods and services
Trade mark registrations correspond to a selection of goods and services that reflect how the mark is used or will be used in the future. In some cases, identical trade marks coexist on the register without any risk of confusion because the goods and services covered by the respective trade mark registrations do not overlap and are considered sufficiently distinct. Applicants select goods and services with reference to the Nice Classification. There are 45 classes: classes 1-34 cover goods and classes 35-45 cover services.
A specification that is too broad or vague runs the risk of being challenged by the trade mark examiner, and the scope for opposition increases.
Conversely, a trade mark specification that is too narrow might not provide sufficient protection for future developments eg a diversification of goods and services provided under the mark.
If the trade mark application meets the basic requirements of the trade mark registry and does not fall foul of the ‘absolute grounds’ listed above, it will proceed to publication. If the mark goes unchallenged, it will proceed to registration.
Alternatively, a third party may file an opposition based on earlier trade mark rights that conflict with the mark applied for, ie the marks are too similar or are identical or, more unusually, there is a conflicting passing off right, copyright or design right.
For UK trade marks and EUTMs, a party has two months from the date of publication of the application to file an opposition or observations, or to file a notice of threatened opposition which will extend the opposition period by 1 month.
Maintaining trade mark registrations
A trade mark registration in the UK or EU lasts ten years and it can be renewed indefinitely. Failure to renew a trade mark registration means that registration will lapse.
Trade marks may become vulnerable to cancellation if they are not used for a continuous period of five years or used in an inappropriate way. Trade mark owners may also lose their rights if they fail to enforce them.
An example of this is where a trade mark becomes a generic word and consequently loses its protection eg the words ‘sellotape’ and ‘escalator’ can no longer be protected as trade marks. In addition, unchallenged infringement may dilute the value and distinctive nature of the mark and ultimately lead to its revocation.
Holders of registered trade marks are advised to use the ® alongside their trade marks which notifies the public that the mark is registered. In the UK, it is a criminal offence to use the ® in respect of an unregistered mark—instead the mark TM should be used, which is also useful where there is a pending application.
Organisations should consider implementing a trade mark policy to ensure that members of staff and associates use registered trade marks in the appropriate way.
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