Trade marks

Trade marks

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Trade marks

Trade marks are signs which are capable of distinguishing particular goods or services of one business from those of another. The sign must be distinctive to be a trade mark and ideally should be registered as soon as possible. This wide definition is capable of covering, for example, words (including personal names), designs, letters, the shape of packaging of goods themselves, sounds, and even smells. Once registered, it becomes exclusive property of the registered proprietor in respect of the goods and services under which it is registered. This means that a third party cannot use the registered trade mark in relation to the same goods or services under which it is registered, or in exceptional circumstances, at all.

Trade mark protection is jurisdictional; therefore a UK trade mark is only protected in the UK. However, registered trade marks can be obtained to include a European or an International trade mark to cover as many countries as is necessary for the proprietor. A UK registered trade mark shall last for 10 years from the date of filing the application. However, please note that under certain circumstances a trade mark can be revoked or invalidated.

Trade marks are registered in use classes and you should register the mark only in relation to the use classes which you intend to apply your goods or services to now or within the next 5 years. There are 42 use classes available: 34 classes of goods and 8 classes of services. The choice of use class is important since the mark is given monopoly rights in the relevant class(es) for goods/services registered.

A mark will not be registered:

  • Unless it has a distinctive character (for example, it is not possible to register the mark 'banana' for bananas)
  • Where the mark consists exclusively of signs or indications which simply designate the kind, quality, intended purpose, value, geographical origin, time of production or other characteristic of the goods or services, e.g. 'York trailers' for trailers made in York
  • Where the mark consists exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade

In relation to these first three grounds for refusal there is, however, an exception that will still allow the mark to be registered if it can be shown that before the date of application for registration and following the use which has been made of it, that the mark has already acquired a distinctive character. Further grounds of refusal (which do not benefit from this exception) are:-

  • If the mark is contrary to public policy or accepted morals
  • If the mark is likely to mislead the public as to the nature, origin or quality of the goods
  • If the mark is prohibited under UK statute or EU law
  • If the mark is a specially protected emblem such as a national flag
  • If the mark consists exclusively of the shape which results from the nature of the goods themselves or consists of a shape which is necessary to obtain a technical effect or a shape which gives substantial value to the goods
  • If the application is made in bad faith. There is no definition of 'bad faith'. Whether an application was made in bad faith has to be determined based on the circumstances of the particular case. Some typical examples are where:
  • A distributor applies for the mark in his own name
  • The applicant has clearly copied another's well-known unregistered mark
  • There is no bona fide intention to use the mark, for example, an antiques dealer including in his specification 'beer' and providing no evidence of any connection with brewing when challenged
  • An application is made for a mark for a range of goods 'confectionary, chocolate, biscuits, cakes etc.' whereas the intention was only to use for a particular lollipop. This bad faith case was strengthened by evidence that the applicant knew the opponent planned to use the mark.

While the registering body will look at all circumstances of any particular case, it has been suggested that bad faith 'plainly includes dishonesty and ... also some dealings which fall short of the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area being examined.'

In addition there are situations where the registering body may refuse registration. This may happen if the mark:

  • Is identical to an earlier mark and the application is in respect of identical goods or services
  • Is identical to an earlier mark and the application is in respect of similar goods or services
  • Is similar to an earlier mark and the application is in respect of identical goods or services
  • Is similar to an earlier mark and the application is in respect of similar goods or services and there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark
  • Is identical or similar to an earlier mark where the earlier mark has established a reputation and the latter mark would take unfair advantage of or be detrimental to that reputation
  • Is likely to be contrary to a rule of law protecting an unregistered trade mark, e.g. passing off or other intellectual property right (e.g. copyright, design right or registered design)

Procedures for application

It is usual and advisable to engage a trade mark agent or solicitor to assist in the drafting and pursuing registration of a trade mark. The first step is to search the register to find whether there are any conflicting marks in the use class(es) chosen by the applicant.

If the search indicates that there is no conflicting prior mark, an application form can be submitted to the Intellectual Property Office (for a UK mark). The charges payable to the Intellectual Property Office for lodging a trade mark application are £200 for the first use class (online applications are eligible for a £30 discount) and £50 for each additional use class thereafter (VAT is not charged).The applicant has to submit details of the mark and its proposed use. The Trade Marks Examiner will examine the application to decide whether the mark meets the necessary requirements and search the register for possible conflict with earlier marks. If the mark does not meet the necessary requirements, the Trade Marks Examiner may object to the application. If it does meet the necessary requirements, but there is a possible conflict with earlier marks, the Trade Marks Examiner will notify you and ask you whether you still wish to proceed with the application. If you do proceed with the application, the proprietors of the earlier marks will be notified.

The Trade Marks Examiner will publish the mark in the Trade Marks Journal for two (2) months (extendable by a further month) so that anyone (including proprietors of earlier marks) can raise objections. If no further objection is raised or if the applicant defeats any objection raised, the mark is registered. Once registered, the trade mark can be used with the addition of ®. It is an offence to use ® in relation to goods and services for which a mark is not registered. Registered trade mark protection lasts for an initial period of 10 years and is renewable indefinitely thereafter on payment of renewal fees to the Intellectual Property Office.

Trade mark infringement

A registered trade mark is a property right. It can be bought or sold or licensed, either entirely or partially. The owner's exclusive rights to a trade mark are infringed if, in the course of trade, a person does any of the following (even without specific knowledge of the registration and/or intent to deceive):

  • Uses a mark which is identical to a registered trade mark in relation to goods and services identical to those for which the mark is registered
  • Uses a mark which is identical to a registered trade mark in relation to goods and services similar to those for which the mark is registered and there is a likelihood of confusion in the public mind
  • Uses a mark which is similar to a registered trade mark in relation to goods and services identical to those for which the mark is registered and there is a likelihood of confusion in the public mind
  • Uses a mark which is similar to a registered trade mark in relation to goods and services similar to those for which the mark is registered and there is a likelihood of confusion in the public mind
  • Uses a mark which is identical or similar to the registered trade mark where the proprietor of the registered mark has established a reputation and such use, without due cause, would take unfair advantage of or be detrimental to the character or the repute of the earlier trade mark

'Use' of the mark includes putting it on business papers, goods or packaging, or offering, marketing, importing, advertising or stocking goods or supplying services under the mark.

Remedies

In an infringement action, the registered owner may claim any of the following remedies:

  • Damages or an account of profits
  • An order for the offending sign to be erased, removed or obliterated from any infringing goods, material or articles. If this is not reasonably practicable, an order may be sought for the infringing party to destroy or deliver the infringing goods to a person in the court direct.
  • Injunctive relief (or, in Scotland, Interdict)

Defences

The Trade Marks Act 1994 permits comparative advertising. This occurs when one business refers to the mark of another when promoting its own goods and services. However, there will only be no infringement if the use is according to the honest practice in industrial or commercial matters and is not detrimental to the other mark.

Under the Trade Marks Act 1994, a registered trade mark is not infringed in the following circumstances, subject to such use being in accordance with honest practices:

  • If the trade mark happens to be a person's own name or address
  • If the trade mark is used to indicate the kind, quantity, quality, geographical origin and time of production of goods or other characteristic of the goods or services. An example would be a soft drink maker who tells customers of the branded sweetener in their product
  • If the use is necessary to indicate the intended purpose of goods and services. An example would be the sale of spare parts for third party products
  • In addition, a registered trade mark is not infringed:
    • By using an unregistered trade mark, which has been used continuously before registration or first use of the registered trade mark
    • By using a registered trade mark in relation to goods and services that are covered by that registered trade mark even if there is a similar registered trade mark belonging to someone else
    • By using, in the course of trade in a particularly locality, an earlier right (unregistered mark) which applies only in that locality

Losing a trade mark

Registration of a trade mark may be revoked if:

  • A mark is not put to genuine use within five years from completion of registration and there is no proper reason for non-use
  • Use of the mark has been suspended for an uninterrupted period of five years and there is no proper reason for non-use
  • The mark has been allowed by the owner to become a common name in the trade
  • Because of the use made by the owner or with their consent in relation to the goods or services for which it is registered, the mark becomes misleading to the public

An application for revocation can be made by anyone to the Registrar or to court, depending on the circumstances.

Surrender of registered trade mark

A registered trade mark may be surrendered by the proprietor in respect of some or all of the goods or services for which it is registered.

Invalidation of registered trade mark

The registration of a trade mark may be declared invalid on the grounds that it should not have been registered in the first place i.e. one of the absolute grounds of refusal (i.e. one of the situations described above where an application must be refused) can be met. It can also be made invalid if it was registered despite there being an earlier trade mark which is either identical or similar to your registered trade mark and in relation to identical or similar goods or services, subject to certain conditions being met. This would only apply where the proprietor of the earlier registered trade mark had not consented to your registration. An application for invalidity of a registered trade mark may be made to the Registrar or to the Court, depending on the circumstances.

Trade marks abroad

Although a UK registered trade mark is protected only in the UK, it can be used as the basis of one or more international filings. The procedure for registering an international trade mark based on a UK registered trade mark is set out by the Madrid Protocol and is handled by the World Intellectual Property Office ('WIPO'). The contracting parties to the Protocol (called a Madrid Union) consist of the countries under which an international trade mark may potentially be covered; an international application is not necessarily worldwide. You would be required to choose which members of the Madrid Union you would like to register your mark under. For a list of the members of the Madrid Union, please visit Members of the Madrid Union.