For hundreds of years, traders have put symbols or marks on their goods to indicate their origin. There have been cases in the UK involving trade marks for centuries, which can be traced as far back as the reign of James I, over 400 years ago.
Although there had previously been several acts relating to trade marks, they were not comprehensive and it was not until the Trade Marks Registration Act 1875 that it was possible to register trade marks for any type of goods. It was over one hundred years, in 1986, before it was possible to register marks for services.
Registered trade marks give powerful rights to their proprietors and are very important and valuable assets.
The first trade mark registered under the Trade Marks Act Registration Act 1875, trade mark number 1, was registered in the name of Bass, Ratcliff & Gretton Limited and dated 1 January 1876.
It is still in force and is now in the name of Brandbrew S.A.
What is a trade mark?
- A trade mark is something (e.g. a word or sign) which enables customers to identify goods or services as coming from a particular source, even though they may not know the source’s identity.
- A reputable trader will want his products or services to have desirable and reliable qualities, so that the customer will come to regard the trader’s trade mark as a guarantee of quality.
- Marks can be very valuable and important if properly developed by advertising, promotion and correct use on quality products or services.
- Thus, it is vitally important for the mark’s repute and the producer’s repute to protect the mark in the UK and abroad.
- The strongest means of protecting a mark is to register it.
How do you register a mark?
- In order to register a mark, an application must be made to the UK Intellectual Property Office, which will examine the application to see whether it satisfies the statutory requirements for registration.
- If those requirements are considered when choosing a mark, and the Trade Marks Register is searched, then a lot of subsequent time and expense can be saved.
Some basic guidelines for new marks
To be registrable:
- A mark must be distinctive.
- A mark can be a single word, logo, picture or a mixture of any of these. In fact, it can be anything that can be depicted graphically.
- A mark can be a three-dimensional shape as long as this is not the result of the function of the object or container.
- A mark must not be descriptive SPORTY for sports clothing
- A mark must not be deceptive SILKY for cotton goods
- A mark cannot be a common surname or geographical name JONES or LONDON
- A mark cannot be a national flag, or someone else’s heraldic device, although sometimes parts of such items can be acceptable.
- A mark must not be confusable with any earlier registered mark - that is why the register is searched.
- If in doubt, consult us.
- All the above comments apply to new (unused) marks. In some cases, use of a mark for several years may make that mark registrable, even if it was not registrable when new and unused.
Can you use your new mark/brand/logo?
Even if you know your market and competitors well, you cannot be sure that you will not infringe someone else’s rights when you use your new mark. If you do infringe (even without intending to) the consequences can be very serious.
One way to reduce this risk is to ask us to search for potentially conflicting registrations before you launch your new mark. This is strongly recommended.
The situation may be different for each country in which you intend to use the mark. A separate search and separate advice is usually necessary for each country. We can advise you further on this.
Why should you register a mark?
The Trade Marks Act 1994 changed the way registered trade marks are viewed in the United Kingdom.
In particular, the rights in a registered trade mark were extended, increasing the benefits of registration.
Any trader using his mark acquires common law rights through the use of the mark. However, these rights are more difficult (and expensive) to enforce than the rights which come from a trade mark registration.
Also, if you have only used your mark for a short period, and have not filed an application for registration, it may not be possible to stop someone else registering “your” mark and interfering with your right to use it.
Registration gives a monopoly on use of the trade mark in relation to the goods/services for which it is registered.
Common law “passing off”
The owner of a mark can acquire some rights without registering his mark. A trader who uses a mark acquires “goodwill” in association with that mark. “Goodwill” has been defined as the quality which causes a customer to go to one particular trader rather than any other.
The owner of a trade mark can sue another trader who uses that mark in such a way as to confuse the public into believing that his goods are those of the owner of the mark. This is a “passing-off” action.
In the UK, a trade mark registration gives the proprietor the exclusive right to use the registered trade mark on those goods or services for which it is registered. A registration also gives the owner the right to stop others from using confusingly similar marks for their goods or services. In some circumstances the owner of a registered mark can stop others from using a mark for goods or services which are not similar to those for which it is registered.
The advantages of registration
You have stronger rights to use and protect a registered trade mark.
An act for infringement of a registered trade mark is generally easier, quicker and less costly than an action for passing-off.
Licensing of a registered trade mark is far safer.
Having a registered trade mark in the UK is a good platform for applications in many overseas countries.
Having a mark on the register warns others of your claim to that mark and thereby acts as a deterrent.
When should you register your mark?
When the cost of changing the mark is likely to exceed the cost of registration - if advertising costs are taken into consideration, this must be the case in virtually all instances of introducing a significant new mark or brand name.
Whenever you believe the mark has a future beyond a few months.
The sooner you register your mark, the sooner you will have the advantages of registration outlined above.
How do you register in the UK?
Once a mark has been chosen, an application is made to the UK Intellectual Property Office. The application must specify the goods and/or services on which the mark will be used.
The Register of Trade Marks is divided into 45 administrative classes of goods and services, e.g. soft drinks fall into class 32. A charge is made for each class covered by an application.
In theory it is possible to register a mark for all goods or services in a class, and for all classes. However, there are three drawbacks to this policy:
- it would be very expensive;
- the UK Intellectual Property Office would probably not allow it as an applicant must have a real intention to use the mark on all goods and services for which he has applied;
- if the mark is not used for five years on the full range of goods and services covered, the registration can become invalid and can be removed from the register for those goods or services for which there has been no use.
Thus it is advisable to register a mark only for those goods and/or services on which you ( or someone with your permission) are intending to use it in the near future.
A UK registration must be renewed every ten years. If you are also interested in protecting your mark in other European countries in addition to the UK, the European Union Trade Mark (EUTM)1 application is an option - see our separate page on this topic: European Union Trade Marks - The Basics.
How do you register abroad?
The principles of registration abroad are similar to those of the UK. The details of the laws and the procedures for registration in each country vary, and you will need professional advice about each country.
In many countries, rights in trade marks are obtained only by registration. Therefore, it is unsafe to rely on use to protect your rights abroad - an application has to be made. At present, in general, a separate application is necessary in each country of interest.
However, there are also two international systems at present: (a) the EUTM system, covering the 27 European Union countries and (b) the Madrid Agreement and Madrid Protocol systems, covering a range of countries. We can advise you further on these if you wish.
It is advisable to apply for registration as soon as possible in countries where you are trading or intending to trade. This will prevent third parties from pre-empting you and registering your mark, which could prevent you from trading under that mark in that country.
As in the UK, you should search the overseas registers first, before you start using the mark and before you apply to register the mark.
How can we help in this?
- We can advise you on marks which may be registrable in the UK, under the international systems mentioned above, and in other countries.
- We can carry out searches prior to application in the UK to try to establish whether the same or similar marks already exist. We can also arrange for searches to be carried out in other countries.
- We can advise on appropriate classes of goods and services, and complete and file an application with the UK Intellectual Property Office. For applications abroad we use local associates, selected on the basis of previous experience.
- Where there is a choice of routes to protection in a set of countries, we can advise on the appropriate strategy.
- We correspond on your behalf directly with the UK Intellectual Property Office and the EUIPO2, and respond to any official objections raised against an application.
- We can provide advice on how to protect your mark during use in advertising and media coverage.
- We can arrange to watch for marks applied for by others that may conflict with your own, and oppose their registration.
- We can advise you on possible infringements and on enforcing your mark against any infringers.
- We can advise you on the protection of your mark in assignments, appointment of agents and distributors and in licensing agreements.
1 previously known as a Community Trade Mark (CTM)
2 previously known as OHIM
This brief introduction to the selection and protection of trade marks is simplified and must not be taken as a definitive statement of the law or practice.