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Registering trade marks

A trade mark can be a word, logo, shape, colour, sound, smell or three-dimensional form or any combination of these, a trader uses to distinguish their goods or services from those of others. If it is to be registered, the owner must be able to represent it graphically on the application form, for example, sounds could be represented as notes, or smells as a chemical formula.

How are trade marks protected?

Use

If a UK trader uses a trade mark for a period of time so that it has come to be associated with their goods or services, they can bring a 'passing off' court case in the UK against anyone else who uses it in the UK and therefore misrepresents that their goods or services are the trader's, or connected with them, or that the trader somehow endorses their goods or services. The mark does not have to be registered for the trader to do this, but they must prove:

  • That there is goodwill in the mark (ie that it has a good reputation in the marketplace).
  • That the mark is associated with his business.
  • That they have suffered damage.

Passing-off cases can be time-consuming and expensive. And you must take action as soon as you learn of an infringement - delay will count against you.

Many other countries give traders similar rights, but there can be important differences. Some countries do not give traders a remedy at all.

Trade mark registration

Alternatively, a trader can apply to register a trade mark. Most countries have a trade marks registry, and registration will protect the mark from infringement in that country. Traders should consider registering in every country where the mark is used. Alternatively, there are some registries that give protection in more than one country, but through one registration. An example is the European Community trade mark registry in Spain, which gives protection throughout the European Union. It is also possible to register under a treaty called the Madrid Protocol, to get protection in all the countries that have signed the treaty.

Registration gives a trader automatic protection - unless they have stopped using the mark, they will win any dispute if someone uses the same or a similar mark in the country or countries where it is protected. Most registries have similar criteria for registration and provide similar remedies to the trade mark owner, but take advice on any differences.

Registration also makes it easier for a trader to sell the mark, license someone else to use it or mortgage it - use it as security to raise money.

Registration of a trade mark also gives the owner significant rights if someone who has no rights or legitimate interest in the name registers an identical or confusingly similar internet domain name in bad faith (eg to extort money from the trade mark owner). The various official dispute resolution procedures that operate in relation to domain names, such as the Nominet procedure in relation to .co.uk domain names, usually give the trade mark owner the right to have the domain name suspended or transferred.

Criteria for registration

Usually, the mark must be distinctive, and not just a description of goods or services (or a characteristic of them), before it can be registered. For example, a card-maker who wanted to register the simple words 'greetings cards' would have to make them distinctive, for example, by incorporating them into a logo or combining them with other, qualifying and distinctive words, before submitting an application.

Other problem words include well-known place names, common family names, very short words, numbers or combinations of them (A1 is a good example) and terms of art.

Most registries will refuse to register a trade mark that is deceptive (ie it misleads consumers as to the nature or origin of the trademarked goods or services), against the law or against accepted morality.

If the same or a similar mark is already registered in relation to the same or similar goods or services, the owner will have the right to object to the registration. The registry will then give each side a chance to put its case, and make a decision whether to register or not.

Classes

Marks are usually registered in respect of particular goods or services, called 'classes'. A trader who wants to use his mark in respect of more than one class must apply to register it under each class. There is a list of the 45 UK classes on the Intellectual Property Office website.

Flagging your trade mark

Traders can make it clear their mark is registered by using the ® symbol. It is an offence to use it if the mark is not registered. If it is not registered, they can use the ™ symbol.

Renewal

In most countries you must renew your trade mark periodically (every ten years in the UK). If you do not use it for five years, it can be revoked.

Searching trade marks registers

Whether they intend to register or not, traders should take advice on whether and how to check that no other traders have already registered the same or a similar mark in the registries covering each country in which they propose to use their mark. Traders can make preliminary online searches for the same or similar marks registered in the UK on the Intellectual Property Office website and for marks registered in the EU registry at www.oami.europa.eu/CTMOnline/RequestManager.

If they intend to register, traders should also take advice on whether the mark is capable of registration (eg it is distinctive) in each registry.

Monitoring

There are paid-for monitoring services, often provided by the registries themselves, which will alert traders, whether their marks are registered or not, to applications made by other traders to register the same or similar names as trade marks. These give businesses early warning, so they can decide what to do.

Previously, the UK registrar would raise an objection to any marks submitted for registration if they thought they were too similar to an existing mark. He no longer does so, although he does write to the trader who owns the existing mark to alert them to the application. This means that traders must ensure they react quickly to any such notification, and/or monitor the register for identical or similar marks themselves.

Timescales and costs

The registry fees for registering a trade mark vary according to the registry where the application is made, and the number of classes applied for. In the UK registry, the fee is £200 to apply in one class, and an additional £50 for each class applied for. Professional fees will also be payable for any advice and drafting carried out on your behalf.

UK trade marks usually take about four to six months to register, though may be longer if another trader objects to the application. There is an initial period during which another trader can object to the application - currently two months.

Take advice on whether and where to register, and on the application - it is vital to get it right first time, as it cannot be amended once it is submitted.

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