The definition of a trademark
The trademark has become the hallmark of modern consumer society. It is a commercially recognised way of indicating origin, quality and reputation. As such, a distinctive trademark can be an effective way of promoting your goods or services, as well as preventing competitors from imitating your brand identity.
Under the Trade Marks Act 1994 a trademark is defined as ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings’.
As such, a trademark can include any words, letters, numerals, symbols or designs that distinguish your goods and services from those of other traders. So long as the mark can be visually represented, a trademark can, for example, comprise of the shape of your goods or even a sound clip.
Do I need to register my trademark?
In theory a trademark need not be formally registered. If your unregistered trademark has built up sufficient goodwill, you may be entitled to protection under the common law of ‘passing off’.
This area of law is designed to prevent one party from using the goodwill associated with another party for their own benefit. However, to establish a claim there are three essential elements that you would need to demonstrate:
- Goodwill, ie; there is goodwill or reputation attached to your goods or services by association with your trademark
- Misrepresentation, ie; there has been a misrepresentation by a party which has led or is likely to lead to confusion in the mind of the purchaser
- Damage to goodwill, ie; there has been actual or likely loss of goodwill, financial or otherwise, by reason of this misrepresentation.
A claim for passing off can prove to be complex and time-consuming. As such, any common law right acquired by simply trading under a particular name or logo can be difficult to enforce. Further, the law of passing off does not prevent another person from registering your trademark.
Is my trademark available for registration?
Undoubtedly the best protection for your brand is to register your trademark. First, however, you must establish whether your trademark is available for registration.
Trademarks are registered for specific goods or services within individual classes. As such, you must verify whether another party has registered, or applied to register, a trademark that is identical or similar to yours within the same or similar class. If so, you may not be free to use your trademark without risk of infringing their rights.
You will need to undertake a search of the trademarks database to check if an identical or similar brand already exists. This can be done free of charge online. You may also want to check the Intellectual Property Office’s online journal to identify any pending applications.
Under the Trade Marks Act 1994, registration of a trademark identical or similar to an earlier trademark will provide a ground for refusal of your application. Whilst permission may be sought from the holder of any existing trademark, you would need a letter of consent to accompany your application.
Is my brand likely to qualify as a registered trademark?
UK trademark law has strict statutory requirements. Not every word, logo or other type of mark is capable of being registered. To successfully obtain registration the following criteria must be met:
- Your trademark must not be devoid of any distinctive character, ie; it must be capable of clearly identifying your goods or services from those of others
- Your trademark must not be too descriptive such that it indicates the characteristics of your goods or services
- Your trademark must not include customary language or signs typically associated with your goods or services.
The1994 Act also sets out more specific statutory grounds for refusal, including but not limited to where the trademark offends public policy or morality, it is misleading to the public, or closely resembles state symbols or emblems such as flags and hallmarks.
How does the registration process work?
The UK Intellectual Property Office uses an international classification system that groups together similar goods or services into different classes. When making your application you will not only need the details of the type of trademark that you want to register, but also the class or classes in which you want to register that mark.
There are 45 such classes, grouped under class 1-34 for goods and 35-45 for services. Whilst it is relatively easy to classify your goods or services under broad headings such as cosmetics or clothing, within each class there are also a list of pre-approved terms and descriptions of which there are thousands.
It is important to include all terms that may be applicable to your business, both now and in the future, as you will be precluded from adding additional classes or pre-approved terms once your application has been filed. This would then require separate registration.
What is the procedure for registering my trademark?
Applications should be made to the UK Intellectual Property Office either online or using paper forms. There is a fixed fee structure, although this slightly differs depending upon how you choose to submit your application.
Within 20 days of filing your application you will receive an examination report providing you with feedback. If the examiner has no objections your application will be published in the trademarks journal for a period of 2 months. In the absence of any opposition from third parties, your trademark will be registered approximately 2 weeks thereafter.
Your trademark certificate will remain valid for a period of 10 years, at which stage it can be renewed for a fixed fee. A trademark can be revoked for non-use, however, after a period of 5 years.
What protection does my registered trademark provide me with?
The Trade Marks Act 1994 covers both the registration and protection of registered trademarks in the UK. Successful registration of your trademark will allow you to put an ® symbol against your brand and give you exclusive rights to that brand identity. You will also be able to sell, market, license and mortgage your trademark.
As the proprietor of a registered trademark, this will enable you to take legal action to prevent any unauthorised use of your brand, for example, where a party uses an identical or similar trademark within the same or similar class of goods or services to yours.
An infringement may also occur where a party uses an identical or similar trademark albeit in relation to dissimilar goods or services, but this takes unfair advantage of, or is detrimental to, the reputation of your brand.
Further, the unauthorised use of your trademark may constitute a criminal offence, for example, as with counterfeit goods.
Should I seek legal advice?
The law governing trademarks can be complex and confusing. As such, obtaining and enforcing your trademark rights can prove to be technical, costly and time-consuming. It is always best to seek professional legal advice from a lawyer or agent specialising in trademark law.
By building goodwill and preventing competitors from imitating your brand identity, a trademark can prove to be a valuable business asset. A trademark specialist can work with you at all stages, from registration to renewal, to ensure the best brand protection to help your business succeed.