About Trade Marks
What is a Trade Mark?
A trade mark can be any word or sign which enables the owner of the mark to identify and distinguish its goods or services from those of its competitors or other traders. A trade mark can consist of words, designs, letters, numerals, the shape of the goods or their packaging, or any combination of these.

Customers buying a product or service by name will therefore be able to use the trade mark to identify that product or service as coming from a particular source, even though they may not know the name of the actually identity of that source. Use of a trade mark is also indicative to customers of the qualities of the product or service sold under the mark and will become associated with a guarantee of quality of that product or service for future purchases.

For these reasons, a trade mark can become very valuable to its owner as a badge of origin and quality, hence the importance of properly protecting the trade mark and ensuring that it is used properly.

Can I use my Trade Mark?
Before you commence use of any trade mark, you need to be aware of the rights that your competitors or others may have, in order to reduce the risk of you infringing those rights. Failure to do so could result in your competitors taking legal action against you, with potentially serious (and costly) consequences.

It is therefore strongly recommended that a trade mark search is carried out to identify any existing registrations which may be potential barriers to the launch of your proposed trade mark. If you are seeking to launch in multiple markets, separate searches will be required in each country where you propose to use your new mark.

What is a Trade Mark Registration?
Under UK law, a trade mark registration gives the owner of the mark the exclusive right to use the mark on the goods or services for which it is registered.

In the UK and the majority of countries, trade mark registrations are granted for a period of 10 years, which is renewable for subsequent periods of 10 years. In principle, there is no limit to the number of times a mark may be renewed if it is used properly. A mark, however, may become vulnerable to cancellation if it has been used in a different form to that in which it has been registered, or if it has not been used at all for a period of five years.

There are certain restrictions on what marks will be accepted for registration. For example:

   a mark must not be the same as, or confusingly similar to, a mark which has already been registered
      in respect of the same, or similar, goods or services;

   a mark must be distinctive;

   a mark cannot be descriptive of the goods or services on which it will be used, or be a term which
      might normally be used by other traders to legitimately describe their goods and services;

   a trade mark must not be deceptive; and

   a mark cannot be a common surname or a geographical name.

Why Register a Trade Mark?

Unregistered Trade Marks
In the UK, unregistered rights are created through the use of a mark. In the UK, the common law protects the goodwill established in a trade mark arising from such use and enables the owners of unregistered marks to enforce their
rights against infringers under the common law action of “passing off”. In an action for passing off, the owner of the unregistered mark must be able to show that sufficient goodwill in the mark exists which usually requires considerable use of the mark and the submission of substantial evidence of how the mark has been used - this can be an extremely costly process. Even where the existence of sufficient goodwill can be established, the mark owner still has to satisfy the court that the goodwill has been damaged by the other party (or that there is a likelihood of such damage).

The owner of a relatively new unregistered mark who has only used it for a short time may not be able to prevent someone else from registering the same mark which could ultimately prevent or hinder the use of the unregistered mark.

Registered Trade Marks
The registration of a trade mark removes the uncertainly and expense associated with enforcing and protecting unregistered rights.

The owner of a UK registered trade mark does not have to establish any prior use or goodwill under the mark in order to be able to enforce the right. The main advantages of holding a registered trade mark (as opposed to an unregistered mark) are:

   There is an initial presumption that the registration is valid. Whilst a third party may of course
      challenge the validity of a mark, the initial existence of the registration provides greater protection to
      the owner against a claim for infringement, or as a means of taking legal action against an infringer.

   You will have the exclusive right to use the mark in the UK in respect of the goods and services for
      which it is registered and will have the right to take legal action against anyone which uses the same
      or a confusingly similar mark for the same or similar goods and services without your consent.

   The existence of the registration clearly sets out the scope of the rights you are claiming and thereby
      acts as a potential warning to competitors that your trade mark exists and is more likely to deter the
      “casual” infringer.

   Your registration provides protection for your mark even
      before you launch your product or service onto the market.
      Whilst a registration can be cancelled if it has not been
      used for more than five years, a registration will at least
      give you the legal protection you require for your brand
      whilst you prepare or develop it for market, or where you
      envisage a phased roll out of a brand to several markets
      but wish to ensure protection for the mark in all markets
      from the outset.

What is the Trade Mark Registration process?

In the UK, the registration process can be summarised in the following steps:

1. An application is filed at the UK Intellectual Property
        Office (UKIPO). The application must state the goods and
        services for which protection is sought based on an
        official classification system of 45 classes and an official
        fee is charged based on the number of classes of
        protection sought.
   
   
2. The UKIPO examines the application and ensures it
        complies with the criteria for registration. It may raise
        objections with the applicant, who has an opportunity to
        address these objections.
   
   
3. Once the examination is completed, the mark is
        published in the Trade Marks Journal where third parties
        may oppose the mark within a two month period
        (extendable to 3 months). If an opposition is filed, the
        applicant has the opportunity to defend the opposition.
   
   
4. If no oppositions are filed, or any oppositions are successfully defended, the mark will proceed to
        registration. The mark will be entered on the Register and the owner will be issued with a certificate of
        registration.
   

What if I want to register my mark outside the UK?

Most countries of the world have their own trade mark laws and procedures, but the principles of registration are broadly the same. Some countries do not recognise unregistered rights, so a registration is the only means of obtaining legal protection for your brand name.

Registrations abroad in many cases require a separate application to be made in each country. However, there are two systems available to UK applicants for filing applications in certain countries on an International basis:

The Community Trade Mark (CTM)
A Community Trade Mark registration is a single registration which gives the owner protection for its mark in all European Union member states. This removes the need to file individual applications in the member states and is therefore a cost effective means of protecting your trade mark if you intend to use your mark in the EU.

A list of European Union member states is attached.

The International Trade Mark system
The International Registration system is administered by the World Intellectual Property Organisation (WIPO) and is available to UK applicants under what is known as the 'Madrid Protocol'. It allows brand owners who have filed an application in their home country to file the mark in one or more other member states of the Madrid Protocol under a single application. WIPO then administers the dispersal of the application to the registries in each individual country for examination. Again, this allows registrations in multiple territories to be obtained at lower cost than filing the marks individually directly in each country.

A list of Madrid Protocol member states is attached.

Do I need to use the TM or ® symbols?

Use of such symbols is not compulsory in the majority of countries. Owners of unregistered trade marks who wish to indicate to others that they are claiming trade mark rights often use the 'TM' symbol immediately after the mark. For example: Montana iP^TM.

The ® symbol can only be used when a trade mark has been registered.

Where do I go from here?

If you require further information about any of these issues, or are interested in conducting a trade mark search or filing a trade mark application, please call us, send us an email,  or complete the online form set out on our contact us page.

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