Trade Marks for beginners

Trade marks for beginners

In this article we aim to answer some of the questions commonly asked by those who are new to trade marks.

What does a trade mark protect?

A trade mark is a sign that is used in commerce to indicate the origin of the goods or services of the party that uses it. A sign can be a word, a logo, a colour combination, a sound, even a smell. Protecting your sign - or trade mark - by registration grants you a monopoly on that sign: registration confers upon the registered proprietor the exclusive right to use that sign in relation to the goods and services for which it is registered, for as long as it is validly registered.

A common misconception is that a registered trade mark is an absolute monopoly. It isn't. The registration of, for example, a word as a trade mark does not mean that the proprietor now ‘owns’ that word, and that they can stop everyone from using it. The following illustrates how it works: the word ‘banana’ is registered as a trade mark in the UK. A banana is also the name of a fruit. The trade mark registration of the word 'banana' covers plush toys, and this means that the monopoly conferred by registration is correspondingly limited, i.e. to plush toys. The word ‘banana’ can still be used in normal life, as well as in commerce, and it can be registered by someone else as a trade mark, for other goods or services. The monopoly granted by registration simply means that the use in commerce of the word 'banana', in relation to toys and similar products, by anyone other than the registered proprietor (or anyone authorised by the registered proprietor), will infringe the registered trade mark, and that the registered proprietor has the right to stop any such unauthorised use.

Why should I register a trade mark?

Having a registered trade mark makes it significantly easier to keep would-be infringers at bay. Relying on unregistered rights, while possible in the UK (and indeed many other jurisdictions), is costly, and depends on the unregistered mark enjoying significant goodwill, which can take years to build up and is notoriously difficult to demonstrate to the required standard. By contrast, a registered trade mark is enforceable from the moment registration is granted, with the rights dating back to the date on which the application was filed. In some jurisdictions, unregistered trade marks are not recognised at all, which means that an established user of an unprotected trade mark can find itself in the unwanted position of infringing a later right, simply because the owner of the later right took the time to file an application to register it.

Owning a registered mark is often advantageous in commercial agreements such as licences and franchises, providing more security to the authorised users of the trade mark. Investors and purchasers also tend to like to see registered, rather than unregistered, trade marks, as do distributors. On-line takedown notices typically require the trade mark to be registered before a takedown request will be accepted.

A reluctance to file trade mark applications is common, particularly for new enterprises for whom the costs are often viewed as non-essential, and something that can wait until later. While this is understandable, it can be a false economy: the relatively modest cost of putting trade mark protection in place and being granted a btaining a 10 year (renewable) commercial monopoly is vastly less than costs for having to re-brand, or attempting to rely on unregistered rights to prevent a third party from using an identical or similar sign.

Can I register a trade mark myself?

Yes, you can register a trade mark yourself, there is no obligation to be represented by a trade mark attorney. However, pitfalls await the unwary, and it is not unusual for inexperienced applicants to end up with trade mark protection that does not meet their needs, or to find themselves pulled into conflicts that might have been avoided had they sought professional advice. Furthermore, trade marks are territorial, and most Intellectual Property Offices require an applicant for registration to have an address in the jurisdiction in which protection is being sought. This means that, apart from in one’s home territory, representation will nearly always be required.

When should I register a trade mark?

Unlike designs and patents, the date on which a trade mark application is filed is not inherently significant and, in particular, there are no issues around public disclosure. However, we recommend that trade marks be considered early on in the brand development process, with applications to register the new mark being filed in good time before a new product is launched. This allows you to be confident that the desired trade mark is available for use and registration in the territory of interest.

What should I do before registering a trade mark?

In a word: research. You need to know that no one else is using the trade mark that you want – or anything similar to it – for goods or services that are the same or similar to those of interest, and also that noone has registered it. As well as online and market investigations, we recommend comprehensive availability searches before making a commitment to a new trade mark, as being forced to re-brand at the last minute or, worse, post-launch is both costly and inconvenient. Investigations need to be done in all territories of interest, or at least in the core markets, in order to avoid disappointment and disruption if the desired trade mark is shown to be unavailable.

How do I register a trade mark in the UK?

An application for registration is filed at the UK Intellectual Property Office. The application specifies the trade mark, the owner, and the goods and/or services in respect of which protection is sought. The application is examined for registrability, and the register is searched for potentially conflicting trade marks. If the examiner finds reasons why the mark should not be registered, an examination report will issue, and the objections may need to be resolved before the application can continue. Once examination is complete, the application is published in the Trade Marks Journal, marking the start of a two month opposition period. If no oppositions are filed, registration will be granted, with protection dating back to the filing date.

How do I get international protection?

Nearly every country in the world allows for the registration of a trade mark. International protection can be obtained by filing trade mark applications in the countries - or regions (such as an EU trade mark application) - of interest, and the procedure is broadly the same worldwide. Where protection is required in multiple territories, a so-called International Registration is worth considering as a cost-effective and administratively straightforward option that allows tailored protection in the territories of interest.

How much does cost?

The cost will depend on the scope of the application, and the territories in which protection is required. Please contact us for costs relating to any territories of interest.

How has Brexit affected trade mark protection?

The UK leaving the EU at the end of 2020 means that EU trade marks no longer cover the UK. EU registered trade marks that were in force on 31st December 2020 automatically split into EU and UK registrations, but trade mark owners seeking protection in both the UK and EU must now file separate applications in the respective territories.

For further advice on any of the above, or on any other trade mark question, please contact our trade marks team.