Trademarks: an introduction

Introduction

Trade marks are signs, symbols, logos, words, sounds or music (such as jingles) that distinguish your products and services from those of your competitors. A trade mark is a powerful marketing tool – it helps customers to recognise your business.

This article explains how trade marks can benefit your business. It outlines the legal rights you have automatically and the added protection you can gain by registering a trade mark. It also sets out what to do if someone else is using your trade mark without permission and how to avoid infringing other people's trade marks.

What is a trade mark?

A trade mark is a brand representation of a business. It provides a distinctive way of representing goods or services that sets them apart from those of other traders. It is a valuable piece of intellectual property and can play an important role in your marketing and branding activities. A trade mark can be a word, phrase or slogan, a logo or symbol, a sound or jingle, even a colour or gesture.

A trade mark must be distinctive for the goods and services you use it for. And it mustn't mislead people about the nature of your products or services.

Registration

Common law may give some trade mark protection automatically, provided sufficient trading reputation and goodwill have been built up in a mark. But this is likely to be difficult and costly to defend against infringement. To ensure your trademark is protected, you can register it. Of course, to be able to do this, it must be possible to represent it in words and pictures.

Although the process does cost money, it also gives you alone, the right to use it. Further, it gives you the right to sue anybody who infringes it.

Registering your trade mark can also help you profit by allowing you to sell or license it like any other piece of property.

To register a trade mark in the UK you have to apply to the UK Intellectual Property Office (UK-IPO) by completing form TM3 online and sending it with the appropriate fee and fee sheet to the UK-IPO Trade Marks Registry.

When applying for a trade mark it's important that you:

• Conduct a search to check nobody has registered or applied for the same or a similar trade mark for the goods or services;
• Get your trade mark right first time, as it can't be altered after two months post registration;
• List all the goods and services you want your trade mark to cover, as you can't add after the end of the two month post registration period.

Under the Trade Marks (Relative Grounds) Order 2007 it is possible to register a trade mark that is the same as, or similar to, an existing trade mark unless the owner of the earlier trade marks successfully opposes the new application. The new rules will change the opposition period from a fixed three-month period to two months, with a free extension to three months on request by a party considering opposition. This will ensure that those who have trademarks do not sleep on their rights and instead, remain active.

Fast track

The UK-IPO will normally examine your application within one month of receiving it. However, since 7 April 2008 it has been possible to request a fast-track examination of your trade mark application using the new online form TM3. This fast-track service costs an additional £300, but you will receive your application report within ten working days.

As with a standard application, if your trade mark application is acceptable it will then be published in the Trade Marks Journal. Assuming nobody objects to your application, your trade mark will be registered three months later and you'll get a certificate of registration.

Renewal

A trade mark is registered for ten years, after which time it can be renewed indefinitely.

If you want your registered trade mark to apply overseas, you have to apply to the appropriate national or international organisations.

Registering a trade mark outside the UK

Registered trade marks are territorial. If you apply for a trade mark in the UK, you'll only have protection in the UK.

If you're considering taking your services or exporting your goods abroad, you might want to consider registering your trade mark in other countries for wider protection.

Generally, you have to register trade marks in each of the countries where you want protection.

However, there are two other options which could make life easier. You can also apply for a Community Trade Mark, providing protection throughout the EU. This is done through the Office for Harmonisation in the International Market (OHIM).

You can also register a trademark internationally. Apply through the World Intellectual Property Organization (WIPO).

Defend your trade mark

If you trade using a distinctive logo or slogan or anything else that forms a trade mark, you're entitled to defend it. A trade mark can be a valuable part of your business and is well worth protecting.

You're strongly advised to seek legal advice when defending a trade mark. A suitable trade mark attorney or patent attorney should be able to help.

If your trade mark isn't registered:

If anybody tries to represent their goods or services as yours by adopting the same or a similar trade mark (passing off) you can take legal action against them. You have to prove that:

• The public associates your trade mark with your product or service;
• The other person's goods or services have been mistaken for your own, damaging your business.

If your trade mark is registered

You have an automatic right to sue for infringement if anybody uses your registered trade mark - or one similar - for the goods and services for which you registered it.

There's no need to prove that the public associates your trade mark with your product or service, or that someone else's goods or services have been mistaken for your own. A court can make a restraining order to stop the infringement and you can be awarded damages and costs.

Carrying out a search

You can check whether a trade mark is registered by searching the database on the UK Intellectual Property Office (UK-IPO). However, this has a number of limitations and can't be used to determine conclusively whether a conflicting trade mark exists.

In addition, searching this database for registered trade marks won't help you find out if someone is already using the mark unregistered and can claim a right to it in common law.

Registrar’s powers:

The Registrars who grant trademarks now have wider powers and greater flexibility – for example, in setting a timetable for the filing of evidence based on the particular circumstances of each case, giving preliminary indications, case management, and other areas of opposition and invalidation. For example, the Registrar will have the power to:

• Accept late defences where someone applying to register a trade mark fails to file a counterstatement on time in response to an opposition;
• Set aside decisions within six months of their making when the proprietor can prove they were unaware that their mark or application to register a mark was under attack.