Introduction
This is an overview of the law of trade marks
in the UK. It is aimed at businesses.
If you want...
- A general overview of intellectual property rights, see: Intellectual property: IMPACT guide to the essentials
- A guide to intellectual property disputes, see: Intellectual property disputes: IMPACT guide to the essentials
A trade mark is:
- Any sign,
- Capable of being represented graphically,
- That is capable of distinguishing the goods or services of one business from another.
Trade marks play an essential role in enabling consumers to guarantee that what they’re buying comes from a particular business e.g. you would be a bit alarmed if your “Ford” car was actually made by someone with no connection at all with the Ford Motor Company.
What can be a trade mark?
The following types of signs are all capable of being registered:
- Words
- Letters and/or numerals
- Logos
- Colour schemes
- Packaging
- Shapes
- Sounds
- Smells
A trade mark must be distinctive
A trade mark must be distinctive to qualify for registration. This means that marks that are descriptive of the goods or services may not qualify for registration.
Other qualifications
The Registrar of Trade Marks will have to register a mark unless specified grounds for refusal apply. These include:
- Basic requirements not met
- Mark is descriptive
- Mark is generic
- Mark is likely to deceive
- Clashes with earlier marks
What benefits does a registered trade mark give?
The ability to stop others using your brands – or brands that are confusingly similar – without your consent.
If you don’t register your trade mark and you want to stop someone else using it without your consent, your only option would be to try and sue under the law of passing off, which can be much less straightforward.
How long does a registered trade mark last?
Once you have a registration, it will last for an initial period of ten years. You can renew the registration for further periods of ten years indefinitely.
This ability to renew a registration indefinitely makes registered trade marks unique as a means of protection. No other registration mechanism lasts beyond twenty-five years and no unregistered rights last beyond life plus seventy years.
How to get a registered trade mark
The process comprises three stages:
- Searching - this involves searching the Register of Trade Marks, trade and other journals, to check that the mark isn’t already registered or being used by someone else (i.e. checking that someone’s not beaten you to it – if they have, your use might infringe their rights and result in legal action against you.);
- Application - preparing and filing the application at the Patent Office;
- Prosecution - following through the application to registration.
Trade marks can be registered in the UK and around the world. There are cost efficient procedures available to protect trade marks across Europe (the ‘Community Trade Mark’ - or ‘CTM’ - procedure) and in many countries throughout the World (the ‘Madrid Protocol’ procedure).
Looking after a registered trade mark
Freeth Cartwright can assist in the renewal of trade mark registrations and in the maintenance of a portfolio in the wider sense. This may involve:
- Monitoring trade mark applications by others for similar marks
- Monitoring applications by particular organisations
Dealing with a registered trade mark
A registered trade mark is an item of property that can be exploited by
- Buying
- Selling
- Licensing
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