What is a trade mark?
A trade mark is a brand representation of a business (or goods or services that a business provides) that differentiates the business from those of competitors. As such, it is one of several valuable types of intellectual property and can play an important role in your marketing and branding activities.
A trade mark can be a word, a phrase or a slogan, a logo or a symbol, a sound or music. It can even be a colour or a gesture.
A key requirement for a trade mark is that it 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.
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 trade mark 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 registration process costs money, it also gives your business alone the right to use the mark. 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 it or license it - like any other piece of intellectual property.
To register a trade mark in the UK you have to apply to the Intellectual Property Office (the IPO) by completing form TM3 online and paying the appropriate fee.
When applying for a trade mark it's important that you:
- conduct a search to check that nobody has registered or applied for the same or a similar trade mark for the goods or services
- check that your application describes correctly your trade mark, as it can't be altered after a period of two months post registration
- list all the goods and services that you want your trade mark to cover
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 opposition period is two months, with a free extension to three months on request by a party considering opposition.
This law aims to make those who own trade marks remain active in protecting their rights.
The 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 application. This fast-track service comes at with an additional cost, but you will receive your application report within ten working days.
As with a standard application, if your application is acceptable then details of 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 receive a certificate of registration.
A trade mark is registered for ten years, after which time it can be renewed indefinitely.
If you want your registered 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 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. You can 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).
Defending your trade mark
If you trade using a distinctive logo or slogan (or anything else that forms a trade mark), then other businesses cannot also use it to "pass off" as you (i.e. pretend that they are your business).
You should 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 business' goods or services have been mistaken for your own, damaging your business
If your trade mark is registered
Once you register your mark, you have an automatic right to sue for infringement if anybody uses that mark - or one similar - to sell goods and services similar to the ones for which you registered it.
There is 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 at the UK Intellectual Property Office. 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 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.
The Registrars who grant trade marks have wide powers and greater flexibility.
For example, the Registrar has 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