What is a trade mark?
A trade mark (also written as ‘trademark’ in America or ‘trade-mark’ in Canada) is essentially a distinguishing ‘mark’ or ‘sign’ which a business can use to enable its customers to better identify its products and services. Among other things, a trade mark can take the form of a word, sign, logo, colour, shape, font, sound, jingle or combination thereof. In the UK, it is possible to have a registered or unregistered trade mark.
Registered trade marks
Registering a trade mark provides the owner with exclusive rights to use this trade mark to market relevant goods or services. Furthermore, it furnishes the owner with a right to prevent competitors or rivals from using similar marks or signs to promote their own products.
The main piece of legislation relating to registered trade marks in the UK is contained in the Trade Marks Act 1994. In particular, the key provisions of infringement subsist in section 10:
- A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
2. A person infringes a registered trade mark if he uses in the course of trade a sign where because:
- the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
- the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark
3. A person infringes a registered trade mark if he uses in the course of trade, in relation to goods or services, a sign which:
- is identical with or similar to the trade mark
- where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark
The Trade Marks Rules 2008 set out the process of applying to register a trade mark with the Intellectual Property Office (IPO – see below). The rules also govern various administrative processes regarding trade marks, such as renewal, revocation and appeals.
Note: The Trade Marks Regulation 2018 is another important piece of legislation relating to trade marks; this European derived law has made various amendments to the Trade Marks Act and the Trade Marks Rules.
Unregistered trade marks
If a mark or sign is used in the course of business to distinguish products, there may be legal protections even if it has not been registered. This is the case if the trader has acquired ‘goodwill’ which has become associated with that particular mark (i.e. customers will purchase their products and services on the basis of this mark).
If a rival business uses an ‘unregistered trade mark’ to confuse consumers into purchasing their own products (i.e. in the belief that they are purchasing from the ‘authentic’ trader) it is possible to bring legal action for ‘passing off’.
What is the Intellectual Property Office (IPO)?
The Intellectual Property Office (IPO or UKIPO) is the official UK government body responsible for trade marks and other intellectual property rights (e.g. copyright and patents). Businesses wishing to register a trade mark must apply to the IPO. The IPO also handles the bulk of administrative procedures relating to trade marks.
The UKIPO should not be confused with the European Union Intellectual Property Office (EUIPO) or the World Intellectual Property Organization (WIPO). The EUIPO is responsible for EU trade marks and registered Community designs – and it also works with IP offices across EU Member States, including the UKIPO. The WIPO is a self-funding agency of the United Nations and serves as “the global forum for intellectual property services, policy, information and cooperation”.
What can (and cannot) be registered as a trade mark?
A trade mark can consist of:
- a combination of any of the above
But in order to be a valid trade mark, it must be unique. It is the level of uniqueness which often determines whether a trade mark can be registered or not. For example, a basic coloured shape will often not be unique enough to qualify for registration as a trade mark.
Trade marks cannot be:
- Offensive, e.g. contain swear words or pornographic imagery
- Descriptive (of the goods or services it will relate to) – e.g. use the word ‘coffee’ for a coffee roasting company
- Misleading – e.g. use the word ‘caffeinated’ for drinks that do not contain caffeine
- 3-dimensional shapes (which are associated with the trade mark), e.g. a cylindrical shape for a manufacturer of cylindrical packaging
- Too common and non-distinctive, e.g. a basic coloured shape
- Too similar to state symbols like flags or hallmarks
What is a series application?
Businesses which want to register several similar versions of a trade mark can make a ‘series application’ for up to six different marks at the same time. However, they must all be similar (e.g. look, sound or mean the same), as only minor differences are acceptable.
Trade marks must be unique
In general, a certain mark can only be registered once in respect of a specific (or similar) type of goods or services. A similar mark cannot be used if it could potentially confuse consumers, etc. Therefore, it is necessary to search the trade marks database before making an application to register a trade mark.
However, it is possible to ask the existing owner of a trade mark for a ‘letter of consent’ if they agree to grant permission to register a similar mark (this must be submitted along with the application).
Why should I register a trademark?
As discussed above, it is possible to claim ownership of an unregistered trade mark. In this case, the law of ‘passing off’ can be invoked to prevent a competitor from using a similar mark to promote their goods or services. It is necessary to prove:
- Ownership – of the unregistered trade mark
- Goodwill – which has been built up and is associated with the mark
- Harm – which has been caused by the competitor’s use of the mark
But it is much more straightforward to defend a registered trade mark – which provides a greater level of legal certainty and IP protection for your business.
How do I search for existing trade marks?
There are several ways to search through trade mark databases to ascertain if a similar trade mark already exists and identify its owner:
It is also possible to search through the IPO’s trade marks journal to find any trade mark applications or amendments which have been made in the last week.
How do I register a trade mark?
Apply online to register a trade mark. In order to complete the application, the following are required:
- Trade mark details, i.e. a description of the trade mark, along with any graphics, etc.
- Trade mark classes – each class of goods and services contains a list of pre-approved terms, e.g. class 25 includes clothing, footwear and headgear
More information on registering a trade mark is available In the Government’s Trade marks manual.
A standard application costs £170 and £50 for each extra class.
Alternatively, it is possible to use the ‘Right Start’ service to check if an application meets the rules for registration (a report will be provided); this costs £100 up front (and £25 for each additional class) and a further £100 to proceed with the application (and a further £25 for each additional class). In order to proceed with the application, it is necessary to pay the full fees within 14 days of receiving the report.
Note: If making a series application for three or more marks, an additional £50 must be paid per mark.
Applying by post
It is possible to fill out paper application forms (see “2. Trade mark applications” on the Trade mark forms and fees page to obtain PDF versions). The cost is marginally higher.
Note: It is not possible to change a trade mark application once it has been submitted and fees paid are not refundable.
What happens after I apply to register a trade mark?
An ‘examination report’ will be provided within 20 days of an application. If any objections are raised, there will be two months to take action.
Applications which are approved at this stage will be published in the trade marks journal for two months, and during this time third parties can raise objections.
If there are no objections (or if any objections raised are successfully resolved), the trade mark will then be officially registered and a certificate will be provided to confirm registration.
Once a trade mark has been registered, it will last for 10 years, after which it must be renewed.
How do I object to someone else’s trademark?
As discussed above, applications to register trade marks will be published in the trade marks journal for two months. During this time, third parties can object to its registration, in one of two ways:
- Third party observations (non legal action)
- Opposing a trade mark (legal action)
It is recommended that you seek advice from a trade mark lawyer for help with searches and registration or objections to trade mark applications, as this is a very complex and specialist area.