What can you trade mark?

“What’s a trade mark?” is a question that I’m often asked. A trade mark distinguishes the goods or services of one business from those of others in the marketplace.

What can you trade mark?

A trade mark needs to be different from any other mark used – it can take a variety of forms, here are some examples of what you can trade mark. You can:

• trade mark a word (for example “Virgin”)
• trade mark a slogan (“Just Do It”)
• trade mark a logo (Esso’s tiger)
• trade mark a jingle (Air on a G string to advertise Hamlet cigars)
• trade mark a colour (the purple colour of Cadbury’s chocolate packs)
• trade mark a shape (Dimple whisky bottles)
• trade mark letters (BP, MTV)
• trade mark a number (Channel’s No 5)
• trade mark a personal name (Walkers)

How can you protect a trade mark?

To gain maximum protection, the trade mark should be registered in the territories where business is being undertaken.

The first step is to ensure that the chosen mark is not already being used by someone else in the same line of business. To do this, searches need to be undertaken of the trade mark registers in the relevant territories:

• A limited amount of trade mark searching can be undertaken free of charge online: Intellectual Property Office or the EU’s Trade Marks and Designs Registration Office
• Trade Mark Attorneys can carry out more comprehensive searches. For example, a free initial consultation, without obligation, is available from members of the Institute of Trade Mark Attorneys

Trade mark attorneys will also guide businesses through the process of registering trade marks not only in the UK, but also across Europe; through the Community Trade Mark system, the international registration system (also known as the Madrid Protocol, which has 83 signatories) or anywhere in the world through their trusted associates.

As trade marks are territorial, most new businesses will initially consider applying for a UK trade mark. If a company wants to move into Europe, or even if the company sees itself in Europe in the first few years of existence, then it may be appropriate to apply for a Community Trade Mark (CTM) which gives trade mark protection across all 27 member states and which automatically extends to new members as and when they join the EU. The CTM application process is broadly similar to UK application but the relevant office (OHIM) is located in Alicante, Spain.

Again a trade mark attorney can handle the whole process and, should the business expand to other territories outside Europe, trade mark attorneys can apply for trade mark protection in overseas territories through an international registration system called the Madrid Protocol, which is run by the World Intellectual Property Organization (WIPO) based in Switzerland.

Why bother with a trade mark?

Registration of trade marks is the most effective way of preventing others from using not only the same trade marks as your business, but also anything that may be deemed confusingly similar.

This covers situations where people wishing to trade off the reputation of one business simply tweak the name or logo or other sign in the hope of attracting clients to their business instead of the trade mark owner’s. This danger increases as businesses grow and become successful.

The alternative is to rely on UK common law and what is generally known as passing off.

In order for actions to succeed under common law, the business whose trade mark is infringed needs to show: a) that the trade mark has actually been infringed; b) that they have an established reputation and c) that the alleged infringer has damaged that reputation.

This usually involves the collection of extensive of evidence and sessions in a courtroom which will cost a lot more money than registering the trade mark in the first place and the outcome may be uncertain.

Maggie Ramage is president of the Institute of Trade Mark Attorneys.

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