What is a trade mark?
A trade mark is a sign or symbol that can be represented graphically and which is capable of distinguishing the goods and services of one business from those of another. Trade marks protect signs that are used to distinguish the goods and services of one business from those of another.
Does a trade mark have to be registered to give my business protection?
No. A registered trade mark gives a higher degree of protection and can be less expensive than relying on an unregistered trade mark in the event of dispute. It is also much more straightforward to prevent someone else from using a registered trade mark without permission, as a registered trade mark gives the owner the exclusive right to use that trade mark in relation to the classes of goods or services covered by the trade mark registration. An unregistered trade mark can only be protected by an action for passing off, which is complicated, uncertain and expensive.
Will an unregistered trade mark protect my business throughout the UK?
Not necessarily. Even if your business is the first to use the trade mark in the UK, unregistered trade marks tend to have limited geographical effect. This is because a small business will find it hard to satisfy a court that the mark is synonymous with that business in a geographical area far removed from its own. So, unless your business has a trading footprint that spans the UK, you may find that another business is able to use the same trade mark elsewhere in the UK. If you want your business to have exclusive use of its trade mark across the entire UK, you should apply for a registered trade mark.
Can a trade mark only be a sign or symbol?
No. Provided that it can be represented graphically, a trade mark can be words, slogans, designs, letters, numerals, internet domains, shapes, smells, colours, gestures, sounds and moving digital images.
Can I use the symbol ™ or ® in relation to my trade mark?
Anyone can use the ™ symbol in relation to a trade mark that they own. However, the ® symbol can only be used by the owners of registered trade marks. Use of the ® symbol where the trade mark is not registered is an offence.
Could my business be sued if its trade mark is the same as someone else’s in the UK?
Yes. If your trade mark is unregistered and the other trade mark is registered, it will be very straightforward for the other party successfully to sue your business. To guard against this, you should regularly check with the Intellectual Property Office (IPO) to make sure that there is no registered trade mark that your unregistered trade mark infringes.
Natasha Maddock is a solicitor with Riverview Solicitors.
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