A trademark is any sign which is capable of being represented graphically and distinguishing the goods or services of one business from those of another.
What is a trademark?
A trademark is any sign which is capable of:
• being represented graphically; and,
• distinguishing the goods or services of one business from those of another.
A trademark attaches a business’ reputation to the goods to which it is applied or the services carried out under it.
What can be protected?
The public often think of trademarks as being words or symbols with which they associate particular goods or services with a particular business. For example, the “NIKE TICK” or the word “NIKE” for sportswear. In addition to words and symbols, a trademark may be the shape of goods or their packaging, even colours, sounds and smells.
To qualify for registration, a mark must be distinctive and not be descriptive of the goods and/or services offered under it.
The most effective marks, and those most likely to be accepted for registration, are invented words such as TESCO or ASDA for supermarkets, or words unrelated to the product such as ORANGE for mobile phones.
Procedure for protection
Trademark protection is obtained by applying for the registration of a trademark at the UK Intellectual Property Office.
Trademarks are registered in relation to specific goods and services specified in the application form.
During the application process, owners of earlier registered trademarks and/or unregistered trademarks may seek to object to the application.
Such action is likely to be taken where the mark applied for is identical or similar to an earlier registered trademark or unregistered trademark. It is therefore considered prudent to undertake searches to assess the risks associated with an application.
The proprietor of a registered trademark has the exclusive right to use the trademark in connection with the goods and services for which it is registered.
The owner of a registered trademark may use the ® symbol. Doing this without a registered trademark is a criminal offence.
Subject to the payment of renewal fees, a trademark may be registered indefinitely.
The initial period or protection lasts for 10 years. Renewal fees are payable every 10 years thereafter.
Subject to some exceptions, infringement occurs where a 3rd party, without consent, from the registered trademark owner uses in the course of trade for example:
1. A mark which is identical to an earlier registered trademark in relation to identical goods or services; or,
2. A mark which is identical to an earlier registered trademark in relation to similar goods or services and there exists a likelihood of confusion with the earlier mark in the minds of the public; or,
3. A mark which is similar to an earlier registered trade in relation to identical or similar goods or services and there exists a likelihood of confusion with the earlier mark in the minds of the public.
In the event that a 3rd party infringes a registered trademark, it may be possible to obtain the following remedies:
1. An injunction to prevent future infringement.
2. Compensation for the infringing activity.
3. Delivery up or destruction of any infringing articles on which the mark is reproduced.
The registered trademark owner can assign its rights to a 3rd party, or grant a licence to a 3rd party to do any of the above acts.
Assignments must be recorded in writing and signed by or on behalf of the person assigning the right in order to be effective.
A licence may be granted formally, informally or may arise by implication. A formal licence agreement provides the parties with certainty.
Unregistered rights: passing off
A trademark which is not registered can be protected under the common law of passing off.
The requirement to establish goodwill and reputation in the mark means that a passing off claim is more difficult to prove and often more expensive than a trademark infringement claim. It is therefore advisable to obtain registered protection.
Where a mark is unregistered, the owner may use the ™ symbol to show that it is using the mark in a trademark sense.