Business Law & Compliance

A basic guide to trademark law

9 min read

12 August 2014

Paralegal Luke Moulton walks us through the the trademarking process.

What is a trademark?

A trademark is any sign which is capable of:

  • Being represented graphically; and
  • Distinguishing the goods or services of one business from those of another.

A trade mark attaches a business’ reputation to the goods to which it is applied or the services carried out under it.

What can be protected?

The public often think of trademarks as being words or symbols with which they associate particular goods or services with a particular business. For example, the ‘NIKE tick’ or the word “NIKE” for sportswear. In addition to words and symbols, a trademark may be the shape of goods or their packaging, even colours, sounds and smells.

To qualify for registration, a mark must be distinctive and not be descriptive of the goods and/or services offered under it. A mark will also not be registered if it consists exclusively of signs or symbols which designate the kind, quantity or geographical location of the goods or services. For example, it would not be possible to register “GUN” for guns, “MILAN” for clothing, or “FAST” for a courier service.

Non-distinctive and descriptive marks may, in limited circumstances, become registrable. This will only be the case if it can be shown that the (often long-term) use of the mark has caused the public to associate it with a particular business.

The most effective marks, and those most likely to be accepted for registration, are invented words such as TESCO or ASDA for supermarkets, or words unrelated to the product such as ORANGE for mobile phones.

Procedure for protection

Trademark protection is obtained by applying for the registration of a trademark at the UK Intellectual Property Office. They are registered in relation to specific goods and services specified in the application form.

During the application process, owners of earlier registered trademarks and/or unregistered trademarks may seek to object to the application as well as any use of the mark that is the subject of the application. But such action is likely to be taken where the mark applied for is identical or similar to an earlier registered or unregistered trade mark. Owners of identical and/or similar registered trademarks will be notified of the application by the Intellectual Property Office. It is therefore considered prudent to undertake searches to assess the risks associated with an application.

Owner’s rights

The proprietor of a registered trade mark has the exclusive right to use the trade mark in connection with the goods and services for which it is registered.

The owner of a registered trade mark may use the ® symbol. Doing this without a registered trade mark is a criminal offence.

Duration

Subject to the payment of renewal fees, a trade mark may be registered indefinitely.
The initial period or protection lasts for ten years. Renewal fees are payable every ten years thereafter.

Infringement

Subject to some exceptions, infringement occurs where a third party, without consent, from the registered trade mark owner uses in the course of trade:

  1. A mark which is identical to an earlier registered trademark in relation to identical goods or services; 
  2. A mark which is identical to an earlier registered trademark in relation to similar goods or services and there exists a likelihood of confusion with the earlier mark in the minds of the public; 
  3. A mark which is similar to an earlier registered trade in relation to identical or similar goods or services and there exists a likelihood of confusion with the earlier mark in the minds of the public; 
  4. A mark which would, without due cause, take unfair advantage of or be detrimental to an identical or similar earlier registered trade mark; and/or
  5. A mark the use of which should be prevented by a rule of law or by virtue of another earlier right (which includes the rights of earlier unregistered trademarks discussed below).

Remedies

In the event that a third party infringes a registered trademark, it may be possible to obtain the following remedies:

  1. An injunction to prevent future infringement;
  2. Compensation for the infringing activity, which includes damages for loss of earnings – such damages are usually based upon a reasonable royalty for the use of the registered trade mark made by the infringer, i.e. what would a reasonable licence fee have been for the use that has been made; and an account of the profits made by the infringer arising from the infringing use; and/or
  3. Delivery up or destruction of any infringing articles on which the mark is reproduced.

Exploitation

The registered trademark owner can assign (i.e. transfer) its rights to a third party, or grant a licence to a 3rd party to do any of the above acts.

Assignments must be recorded in writing and signed by or on behalf of the person assigning the right in order to be effective.

A licence may be granted formally, informally or may arise by implication. A formal licence agreement provides the parties with certainty.

International protection

Trademarks are registered on a territorial basis.

It is possible to make a single application to the Office of Harmonisation in the Internal Market to obtain a Community Trade Mark (CTM) which is valid across all EU Member States. This CTM system is very similar to the trade mark system, in the UK.

The Madrid Protocol currently 91 signatory States (including the UK). The Protocol facilitates the filing of a single application for protection in one or more of the signatory States. An application under the Protocol is effectively a bundle of national applications which have the same effect as a national application in each of the designated States.

Unregistered rights: passing off

A trademark which is not registered can be protected under the common law of passing off. In order to establish that a third party has, through its use of an unregistered mark, committed the tort of passing off, it is essential to show:

  1. Goodwill and reputation in the unregistered mark;
  2. That the third party has made false representations which have or are likely to lead the public to be confused that his goods and services are the those of the owner of the unregistered mark, or that his goods or services are associated with or somehow connected to the business of the owner of the unregistered mark; and,
  3. Damage resulting from such misrepresentations.

The requirement to establish goodwill and reputation in the mark means that a passing off claim is more difficult to prove and often more expensive than a trademark infringement claim. It is therefore advisable to obtain registered protection.

Where a mark is unregistered, the owner may use the ™ symbol to show that it is using the mark in a trademark sense.

Luke Moulton is a Paralegal in the Intellectual Property team at Wright Hassall.

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