Registering a Trade Mark is often the most effective way of protecting the branding you invest in and apply to your business and its products. Most commonly, it will be a product or business name, or a logo, and it serves the purpose of distinguishing a product from competitors' products, or a business itself from its competitors.
Whilst copyright can protect 'literary works' and other creations, most trade marks (particularly those which consist only of one or a few words) are too short to fall within the category of works capable of being protected by copyright.
If not registered, a Trade Mark will generally only be protected under the law of 'passing off, a claim for which is not only cumbersome and often difficult to prove, but also requires evidence of actual loss.
In the case of a registered Trade Mark, an action for infringement can be brought in a suitable case with relative ease.
There is a cost associated with registering a Trade Mark, which a business will have to considering when deciding at what point of time it should register - it is, as one client who on grasping this point said to me, 'it is a balance of protection and sense in spending at each stage'. At what point do you feel the need to apply, and secure the protection of registration for investment you are making in your company's name, branding, and products?
Registration cannot be backdated, although an application which is granted at the end of the registration process will have priority as from the date the application was first received by the Trade Marks office.
For more details, read on:
A Trade Mark is defined by section 1(1) of the Trade Marks Act 1994 as:
'any sign capable of being graphically represented which is capable of distinguishing goods or services of one undertaking from those of other undertakings'
That section goes on to say that:
'A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging'
A Trade Mark is an Intellectual Property right.
Intellectual Property Rights, whether patents, designs, copyright, or trade marks, and whether based on legislation or case law, are territorial in nature - that is, they depend for their existence on the laws of a particular country. Consequently:
Whilst there are various international conventions relating to IPR, those relating to Trade Mark law are considerably less widely accepted than those relating to copyright.
There's a dual system of unregistered and registered trade marks in the UK now. The law was changed by the Trade Marks Act 1994, which was passed to bring us in line with various EC Directives and international conventions, and generally to update the law (the previous Trade Marks Act had been passed in 1938).
Registration offers certain advantages, although the rules governing what may be registered as a Trade Mark are a little more restrictive than those which govern what may be used as an unregistered Trade Mark.
You can use the letters TM (generally in a sans serif typeface) after a mark to show that you claim it to be a Trade Mark, and you can do this regardless of whether or not the mark is registered. Equally, you don't have to.
You can leave your Trade Mark unregistered and rely on the law of 'Passing Off' to attempt to protect your reputation and stop anyone who uses the same or similar trade mark in the course of trade. Or you can apply to register it.
Whilst you cannot claim a Trade Mark to be 'registered' until the registration process is complete, an application will have priority from the date it is lodged over any subsequently lodged applications. Likewise any third party's applications which are at present pending would have priority over yours. It is also worth remembering that there is a degree of priority relating to the existing use of an unregistered Trade Mark by you, to the extent to which it has been used to date.
Trade mark law is, by international convention, structured around the fiction that every commercially exploitable product and service in the universe can be slotted into a predefined category; there used to be but 42 of these (the astute reader may sense shades of the 'Hitchhiker's Guide'…). There are now 45; the list can be found here.
You register your mark in one or more of these classes. Whilst this supposedly makes it easier to search the register (by disregarding classes relating to goods or services which are obviously wholly different), there is no other magic in the 'class system', beyond the fact that a separate fee is payable to the Trade Marks registry for each class in which you apply to register your mark. There is nothing to stop identical marks being registered in the same class, provided they are registered for a different specification of goods or services. It is the specification that is the deciding factor, not the class.
Registration can give the following benefits:
In order to register, you have to satisfy the Registrar that the mark qualifies for registration - not every mark placed on goods or services in the course of trade reaches this threshold. To do this you have to show:
Likelihood of confusion with an existing mark, and taking unfair advantage of (or being detrimental to) an existing mark, are grounds on which registration can be refused.
The relevant section of the Trade Marks Act is (I've marked key words in bold):
Section 5. Relative grounds for refusal of registration
(1) A trade mark shall not be registered if [identical mark and identical goods or services]
(2) A trade mark shall not be registered if because-
(a) it is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected, or
(b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier mark is protected,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.
(3) A trademark which-
(a) is identical with or similar to an earlier trade mark, and
(b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is protected,
shall not be registered if, or to the extent that, the earlier trade mark has a reputation in the United Kingdom (or, in the case of a Community trade mark, in the European Community) and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.
[note - in each case, the emphasis is mine]
[Note: as from 1-10-07, 'shall not be registered' in relation to section 5 in fact now means something completely different - ie 'shall not be registered if the proprietor of the conflicted mark successfully raises the point in opposition proceedings'; new rules lay down a procedure whereby proprietors of existing marks are to be expressly notified of applications thought by the trade marks office to conflict.
Whereas before, the Trade Marks Office (now the UK-IPO) would themselves refuse an application of their own initiative if they felt there was a conflict, from now on they will simply tell the applicant that they think there is a conflict, but will allow the application to go forwards to advertisement if the applicant so wishes. They will however expressly notify the holder of any existing UK mark (and of a conflicting community mark, provided the owner has signed up to this notification service) with which the application conflicts, and leave it up to the holder of the existing mark to decide whether to incur the cost of opposing the application.]
On an application to register an identical trade mark for goods which are, on the face of it, similar, the test for registrability would be to compare the similarity of the goods and/or services from the following standpoints (according to the rule laid down in Jellineck in 1946):
and then looking at whether or not there was a likelihood of confusion.
If you can show that the goods and/or services are not similar, then you would simply have to show that you were not taking unfair advantage of any reputation the other party might have acquired by virtue of its reputation in its own mark.
Two cases for illustration - on the face of it, they're each a little curious, but when you think about it, they help to make the distinctions clearer:
If you register your Trade Mark, you have the rights as laid down under the Trade Marks Act 1994. More specifically:
Section 9 Rights conferred by registered trade mark
(1) The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent. The acts amounting to infringement, if done without the consent of the proprietor, are specified in section 10.
...
Section 10 Infringement of registered trade mark
(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because-
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, ...there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
...
Section 11 Limits on effect of registered trade mark
(3) A registered trade mark is not infringed by the use in the course of trade in a particular locality of an earlier right which applies only in that locality. For this purpose an 'earlier right' means an unregistered trade mark or other sign continuously used in relation to goods or services by a person or a predecessor in title of his from a date prior to whichever is the earlier of-
(a) the use of the first-mentioned trade mark in relation to those goods or services by the proprietor or a predecessor in title of his, or
(b) the registration of the first-mentioned trade mark in respect of those goods or services in the name of the proprietor or a predecessor in title of his; and an earlier right shall be regarded as applying in a locality if, or to the extent that, its use in that locality is protected by virtue of any rule of law (in particular, the law of passing off).
...
[note - in each case, the emphasis is mine]
Thus, within the UK, you would have the exclusive right to use the mark for the goods or services for which it was registered, subject only to any unregistered prior rights of any other party:
This last bit is a little cumbersome, but what it basically means is that if someone else had been using the same mark as an unregistered trade mark continuously and from before the date of your application to register, in a particular locality within the UK, then by continuing to do what they had previously been doing they would not be infringing your trade mark. Any expansion of their use of the mark, either geographically, or in terms of the nature of the goods and/or services to which the mark was applied, would be a different matter, and would constitute an infringement.
Trade Mark registry searches, and applications for registration of Trade Marks are among the services I offer; if you are thinking about registering a Mark, and would like to explore this further, please feel free to mail me for more information.
Registration of a Trade Mark can be regarded as a three stage process:
The cost? Well, the Trade Mark registry fee is £200.00 for registration in one class, and a further £50.00 for each additional class. My charges would depend on the complexity of the application, but for a relatively straightforward application in two classes, which proceeded unopposed and without complication, the breakdown would be:
Fee for first class: £200.00
Fee for second class: £50.00
My charges for registration (including search): £800.00
Total £1050.00
I'd really appreciate your feedback on this FAQ - so mail me and tell me what you think of it, if it's been useful to you, or let me know of any specific problem you have where I may be able to help.
This page was last updated 5th October 2007.
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