Trade marks for beginners
This article aims to answer some of the questions commonly asked by those who are new to trade marks.
What does a trade mark protect?
A trade mark is a sign used in commerce to indicate the origin of the goods or services of the party that uses it. A registered trade mark is effectively a state-granted monopoly that confers upon the registered proprietor the exclusive right to use that sign in relation to the goods and services in relation to which it is registered.
A common misunderstanding is that a registered trade mark is an absolute monopoly. This is not so. The registration of a regular English word as a trade mark does not mean that the proprietor now ‘owns’ that word, and they can stop everyone from using it. By way of example, the word ‘banana’ is registered as a trade mark in the UK, but these rights are limited. Registration has been granted for plush toys, and the monopoly conferred by registration therefore is limited to plush toys. The word ‘bananas’ is still available. Bananas are still called bananas, we can use the word ‘banana’ in commerce, we can even register it as a trade mark for other goods or services. What we can’t do is use it in a way that encroaches on the registered rights.
Why should I register a trade mark?
Having a registered trade mark makes it significantly easier to keep would-be infringers at bay. Relying on unregistered rights, while possible in the UK, is costly, and depends on the unregistered mark enjoying significant goodwill, which can take years to build up and is notoriously difficult to demonstrate to the required standard. By contrast, a registered trade mark is enforceable from the moment registration is granted, with the rights in it dating back to the date on which the application was filed.
Having a registered mark can also be advantageous in commercial agreements such as licences and franchises, providing more security to the authorised users of the trade mark. Investors and purchasers also tend to like to see registered, rather than unregistered, trade marks. On-line takedown notices typically require the trade mark to be registered before a takedown request will be accepted.
Can I register a trade mark myself?
Yes, it is possible to register a trade mark yourself, there is no requirement to be represented by a trade mark attorney. However, trade marks are territorial, and nearly all Intellectual Property Offices require an applicant to have an address in the jurisdiction in which trade mark protection is sought. This means that, apart from in one’s home territory, some kind of representation will usually be required. However, pitfalls await the unwary, and it is not unusual for inexperienced applicants to end up with trade mark protection that does not meet their needs, or to find themselves pulled into conflicts that might have been avoided if they had sought professional advice.
When should I register a trade mark?
Unlike designs and patents, the date on which a trade mark application is filed is not inherently significant and, in particular, there are no issues around public disclosure. However, we advise that preparations to adopt a new trade mark start early on in the brand development process, with applications to register the mark being filed before a new product is launched.
What do I need to do before registering a trade mark?
The most important thing to do before filing an application to register a trade mark is research. You need to make sure that no one else is using that mark – or a similar mark – for goods or services that are the same or similar to those of interest. As well as online and market investigations, we recommend comprehensive availability searches before making a commitment to a new trade mark, as being forced to change marks at the last minute or, worse, post-launch can be both costly and inconvenient. These investigations need to be done in all territories of interest, or at least in the core markets, in order to avoid disappointment and disruption if the desired trade mark is shown to be unavailable.
How do I register a trade mark in the UK?
An application for registration is filed at the UK Intellectual Property Office. The application specifies the trade mark, the owner, and the goods and/or services in respect of which protection is sought. The application is examined for registrability, and the register is searched for potentially conflicting trade marks. If the examiner finds reasons why the mark should not be registered, an examination report will issue, and the objections may need to be resolved before the application is able to proceed. Once examination is complete, the application is published in the Trade Marks Journal, with the date of publication marking the start of a two-month period during which third parties can oppose the application. If no oppositions are filed, registration will be granted shortly after the end of the opposition period, with protection dating back to the filing date.
How do I obtain an international trade mark?
Nearly every country in the world allows the registration of a trade mark. International protection can be obtained by filing national applications in countries of interest, or regional protection, for example an EU trade mark application or Benelux trade mark application. Where protection is required in multiple territories, a so-called International Registration is worth considering as a cost-effective and administratively straightforward option that allows tailored protection in the territories of interest.
How much will it cost to obtain a trade mark?
The costs will depend on the scope of the application, and the territories in which protection is required. Please contact us for costs relating to any territories of interest.
Has Brexit affected trade mark protection?
The UK leaving the EU means that the EU trade marks no longer cover the UK. EU registered trade marks that were in force on 31st December 2020 automatically split into EU and UK registrations, but trade mark owners now seeking protection in both the UK and EU must file separate applications in the respective territories.
For further advice on any of the above, or on any other trade mark question, please contact our trade marks team.