What is a trade mark?

Trade marks are 'signs' which are capable of distinguishing particular goods or services of one business from those of another. The term 'sign' is the legal term that refers to the subject of a trade mark application.

A trade mark can consist of words (including personal names), slogans, designs, letters, numbers, domain names, the shape of goods or their packaging, sounds, smells, colours, gestures and moving digital images.

A trade mark helps customers distinguish between products and protects the owner's investment and reputation. It can be a valuable tool in establishing a 'brand' and be a focal point for building brand loyalty.

Types of trade mark

UK registered marks are enforceable throughout the UK and the Isle of Man. The UK Intellectual Property Office (IPO) administers UK registered marks.

The EU trade mark (EUTM) provides a single trade mark registration covering the whole of the EU. Anyone can apply for an EUTM, including those based outside the EU. EUTMs have the same effect in each member country of the EU as national marks registered there. An EUTM therefore gives the owner the right to object to infringement throughout the EU (as of the UK's exit from the EU, however, an EUTM will no longer be enforceable in the UK). In addition, the owner may be entitled to apply for EU-wide relief, such as a pan-European injunction, in respect of all infringing acts in the EU, instead of having to pursue several sets of court proceedings in different member states. The EU Intellectual Property Office administers EUTMs.

An EUTM is enforceable only in EU member states. Brexit means that holders of these types of mark lost the part of them that had effect in the UK.

However, the UK-EU withdrawal agreement provides that:

• holders of EUTMs that were registered before the end of the transition period become holders of comparable trade mark rights in the UK without any need for re-examination.
• if after the transition period an EUTM is declared invalid or revoked in proceedings started before the end of the transition period, the corresponding comparable mark will also be cancelled as of the same date unless the grounds for invalidity or revocation are not applicable in the UK.
• a comparable mark will have the same renewal date as the corresponding EUTM.
• a comparable mark will enjoy the same deemed filing or priority date as the corresponding EUTM and, where appropriate, any claimed seniority of a UK mark.
• a comparable mark will not be liable to revocation on the ground that the corresponding EUTM was not put to genuine use in the UK before the end of the transition period.
• comparable marks will continue to benefit from reputation acquired in the EU before the end of the transition period.
• comparable marks will be granted and registered free of charge. The UK will not impose any application requirement or other administrative procedure for the acquisition of a comparable mark, and owners of comparable marks will not be required to have a UK correspondence address during the first 3 years.
• those whose EUTM applications were pending at the end of the transition period are permitted a further 9-month period during which they may file UK applications for the same rights and take advantage of the same filing, priority and seniority dates as the corresponding EUTM applications.

A trade mark owner can also register their mark outside the UK or EU under an international agreement, the Madrid Protocol. Marks registered under the Protocol are known as 'international' marks. Like the EUTM, an international registration under the Protocol offers the opportunity to obtain trade mark protection in more than one country using one application. The application must designate the countries in which protection for the mark is sought and, once registered, the international mark has the same effect in each designated country as a national mark of that country. The World Intellectual Property Organisation (WIPO) administers international applications.

Before you can file an international application, you need to have already registered, or have filed an application, in your 'home' intellectual property office. This registration or application is known as the basic mark. You then need to submit your international application through this same IP Office, which will certify and forward it to WIPO. So, you can apply to the IPO for a UK registered mark and submit an international application to the IPO at the same time. Or, you can apply to the EUIPO for an EUTM and submit an international application to the EUIPO at the same time.

However, international applications may only be made by applicants who are nationals of, domiciled in, or have a real and effective establishment in, a country which is a signatory to the Protocol and which is the country where their basic mark registration or application is made. This means that, although, e.g., anyone may apply for an EUTM, it may only be used as the basic mark if the applicant is a national of, domiciled in, or has a real and effective establishment in, one of the EU member states.