What is a trade mark?

A trade mark is a sign which distinguishes the goods and services on one undertaking from all others. It provides the customer with a guarantee that the goods and/or services are from a single undertaking, i.e. that they are yours. A good example of brand loyalty is the weekly shopping trip. Many consumers return to the same supermarket week after week. They display loyalty to one particular brand. Consumers display the same loyalty to domestic white goods, motor cars and household goods such as televisions, hi-fi systems etc. There is a tendency to look for, and rely on, personally preferred brands. 

Most trade marks consist of words and/or logos but the Act allows for any sign to be registered. A sign will include colours, shapes, packaging etc.

Importantly, a trade mark must not describe any characteristic of the goods and/or services, be customary in your particular line of trade or deceive the consumer as to the quality of such goods and/or services.  The trade mark must be distinctive of one undertaking with perhaps the most distinctive trade mark of all being an invented word. Examples of invented words are KODAK, IKEA, ASDA and CATNIC.

Another important point is that company names and domain names themselves do not provide any automatic trade mark protection. In order to benefit from trade mark protection they must be registered as trade marks. Remember that the Acts are different. What may be registrable as a company name or domain name may not be acceptable as a trade mark. The tests for acceptability are different.

How to apply

Applications to register a trade mark may be made electronically or on paper. In both cases an official form must be completed. This form is quite simple to complete and must contain the trade mark applied for, a list of goods and/or services in each class on which the mark is to be used, name and address details, date of application and payment of the appropriate fee. You must ensure that you apply for the correct mark because once filed it cannot be amended. You also need to be careful when listing your goods and/or services, once filed additional goods and/or services cannot be added to the application.

The official fee is £200 which covers the application form and one class of goods and/or services plus £50 for each additional class. Assistance is available for applicants who have any queries regarding the goods and services or any other aspect of the application form.

Examination process

Once received, your application will be examined and an official examination report  issued. Examination of trade mark applications normally take two or three weeks to complete. If no objection is raised to your application it will be accepted. However, if objections are raised, these will be explained and the examiner will, wherever possible, suggest ways of overcoming them. You may contact the examiner by post, telephone, fax or e-mail and discuss any objections raised. All applications, when deemed acceptable, will be advertised in the Trade Marks Journal. Once advertised they are open to opposition by a third party for a period of three months. If no opposition is raised then formal registration will follow within a few weeks and you will receive your registration certificate.

NB: It is important to note that of all applications filed, 95% proceed to advertisement and of those, only 5% are opposed. Additionally many such oppositions are settled amicably by the parties involved.

Benefits of registration

There are many benefits that arise from trade mark registration:

•    It helps you to protect your business identity.

•    It protects you against others using the same or similar trade marks.

•    It provides “concrete proof” of your legally protected rights.

•    It removes the need to rely on “common law” rights (passing off).

•    Registration rights extend throughout the UK.

•    Registration protects against others who trade in the same, but defective, goods/services. This may lead to your reputation being ruined.

•    It is an asset, it has value:

o    It may be licensed

o    It may be franchised

o    It may be sold.

It is worth noting that the fee (from £200) provides trademark protection for a period of 10 years. Renewal for a further 10 years is granted automatically, on application, for the same fee. There is no limit to the number of renewals that may be made as there is no limit to the period of registration. In fact trade mark No 1 is still valid as it has been renewed ever since registration was first granted.

Finally remember, if you wish to acquire trade mark rights in several European countries you may prefer to file for a Community trade Mark. This is more expensive but it provides registered rights throughout Europe.

What if I don’t register?

If you decide not to register your trade mark you will need to rely on common law (passing off) to protect your rights. This will require the filing of detailed evidence sufficient to establish your reputation in a court of law. This will take time and substantial time which will not be directed where it should be – your business. With possible appeals the whole process may take years with the outcome always in doubt.

Third parties are entitled to register your trade mark and if they succeed they may offer to license it to you for a fee. They may offer to sell it to you for a fee. If you simply carry on trading they may simply sue you for infringing their registered rights.

There have been many instances where third parties, partners, members of family etc. have registered trade marks in such circumstances. It may be the case that some are unaware of the benefits of trade mark registration and the protection it offers. It may be that they simply overlooked it. No matter why, if your trade mark is not registered both it and your business are vulnerable to such action.

STOP PRESS!

The new ‘Right Start’ Service for trade mark registration, has now been launched. 

An improved fee structure and e-filing services are now available.

Visit www.ipo.gov.uk/rightstart.htm for more information