Trade Marks

GENERAL

A word or graphic (alone or combined) can be protected by registration as a trade mark. Distinctive shapes can also be registered, as can slogans, sounds and even smells. The relevant goods or services must be specified.

Broadly, registration gives exclusive ownership of a mark and protects goodwill established through advertising and use.

EXCLUSIONS

Registration cannot restrict the use of marks which should be free for general use. Thus, a trade mark must not be directly descriptive of the nature, quality, geographic origin, or intended purpose of the goods or services in question. A mark which is likely to be confused with a mark already registered for similar goods or services might also be rejected.

DOMAIN NAMES AND COMPANY NAMES

We often come across cases where people have been advised to "protect" a name by forming a limited liability company or registering an Internet domain name. Neither of these steps gives any right to use a name to identify goods or services, nor do they give any automatic right to prevent others from using the name for such purposes. The authorities do not check to see whether a proposed domain name or company name is already a registered trade mark. As long as the name is not reserved anyone can register it.

If you start using a name without carrying out a few basic checks you could be committing trade mark infringement, passing off or trade libel. Apart from being liable for damages, you could be required to change your domain name or company name with very little notice.

Before setting up a domain or registering a company we strongly recommend that you:

1. Commission a search through Registered Trade Marks (many validly registered marks are not necessarily in use)

2. Check any relevant trade literature for similar marks which are in current use (but not necessarily registered)

In addition, the fact that you might have registered a domain name or formed a company does not automatically permit you to stop other people from using your name to identify their goods or services. This can only be achieved by registering the name as a trade mark (if it meets all the requirements).

OUTLINE OF REGISTRATION PROCEDURES

Initial steps - Conduct searches etc. to confirm whether mark is likely to be registrable. Modify mark if necessary. File Application at Trade Marks Registry.

Examination Report - If any objections are raised it is possible to submit arguments against the objections or withdraw the application. Consider contacting proprietors of any conflicting marks to request consent.

Advertisement - Mark is published in the web-based Trade Marks Journal. The Trade Marks Registry may notify the proprietors of any potentially conflicting marks.  A three month period is allowed for anyone to object. If no opposition is filed, or any opposition is successfully overcome, the registration certificate is issued. Initial period of protection lasts for 10 years. Continuously renewable for like periods.

Overseas registrations - Once the mark appears to be registrable in the UK consider protecting the mark overseas. The date of the UK Application can be claimed if an overseas application is filed within 6 months of the UK filing date.

WHY USE A PATENT AGENT?

It is not essential to use the services of a Patent Agent to obtain a patent or register a trade mark or design. However, if the protection that is offered by these forms of registration is to be of commercial value, and prevent people from encroaching on your invention, design or trade mark, it is essential to employ a professionally qualified Patent Attorney.

There are very strict rules defining what marks are registrable, and Patent Attorneys have a good knowledge of these. In addition, a Patent Attorney will ensure that your mark is not registered too narrowly. It is not unusual for the Trade Marks Registry to raise initial objections to a mark which eventually turns out to be registrable. A Patent Attorney will ensure that the risk of such objections is minimised when the Application is filed, and will also argue your case for registration should that be necessary. The Attorney will have access to earlier precedents to cite in support of the arguments.

INFORMATION REQUIRED

To conduct searches and prepare an application for registration we require:

1. The mark itself. (Will it be used in different forms and colours?)
2. The goods or services with which the mark will be used.
3. Date of first use (if any).
4. The full name and address of the trade mark owner, or owners.
5. Contact details ( address, e-mail and telephone number.)

FIND OUT MORE:

Visit the web site of the UK Intellectual Property Office

© Craske & Co., 1998, 2008

Last updated: 27 December 2010