Looking After a Trade Mark

GENERAL

The importance of correct trade mark usage cannot be over-emphasized. If used properly, trade marks can last forever, growing stronger and becoming more valuable with time. They are, however, susceptible to misuse whereby they can be rendered worthless. For example, Aspirin, Escalator, Linoleum, and Gramophone were once trade marks. They were lost when the marks became generic, that is when they became the common term within the trade to describe the product instead of denoting a particular brand. If a mark becomes generic the exclusive right to use the mark is lost and this inevitably leads to a loss of market share.

GUIDELINES

1. A trade mark should, where possible, be distinguished from the surrounding text. As a minimum, it should have a capital initial letter. Trade marks are valuable assets, so always differentiate them in such a way as to make their special status obvious. For example underline the trade mark or use a different colour. Use inverted commas or capital letters, use bold lettering, highlight the mark or use italics. In all cases, ensure consistency.

2. A trade mark should never be used as a noun. Trade marks are proper adjectives and should be used as such, followed by a noun, i.e the product name. E.g Whizz washing powder, Blast mustard. Never use a trade mark as a verb. Correct: Wash clothes with Whizz washing powder. Incorrect: Whizz your clothes. Never use a trade mark as a possessive noun. Correct: The improved action of Whizz washing powder. Incorrect: Whizz's improved action.

3. Never corrupt a trade mark. Decide on your mark and be consistent with its usage. Correct: Whizz. Incorrect: Whizzo. Such use is an invitation to others to see the word as the description of the product and is a short route to it becoming generic. The spelling of a word mark should be consistent and a device mark should not be embellished in any way. Similarly, marks containing both a word and a device should neither be divided into separate elements, nor have the relative size and positioning of the elements changed. If your trade mark is registered in various colours, then ensure the correct colours are used at all times. You must use your trade mark as registered, otherwise a third party could challenge the validity of your registration on grounds of non-use.

4. If your trade mark is a "house mark" which is included in the company name, make sure you take care to distinguish between use of the company name and use of the trade mark. In trade mark law, the use of the company name does not necessarily count as use of the trade mark.

5. The use of symbols can help to strengthen your trade mark:

® can be used to indicate that a trade mark is registered.

TM can be used if a trade mark is not registered. This carries less weight.

Another way of identifying your trade mark is to use a symbol such as * next to the mark and a footnote, e.g. * Whizz is a trade mark of the squeaky clean company.

6. Be vigilant and take swift action if any third party abuses your mark. Infringement may occur where a third party uses an identical or similar mark on identical or similar goods. Passing off is essentially a misrepresentation that the goods of one trader are those of another, and can only be brought upon proof of reputation and distinctiveness acquired through use. This may occur where your distinctive get-up or packaging has been copied.

COMPARATIVE ADVERTISING

Previously, the use of a trade mark may have been infringed if unauthorised use of that mark was made on business papers or in advertising. The 1994 Trade Marks Act permits comparative advertising, provided it is in accordance with honest practices in industrial or commercial matters and does not take unfair advantage, or is detrimental to the distinctive character of the mark.

© Craske & Co., 1998

Last updated: 11 April 1998