A trade mark identifies the goods or services of a particular trader as having originated from him. While there is no legal requirement to register a trade mark, it is normal to do so since the registration of a mark affords better protection against unauthorised use of the same or similar trade mark. Additionally, trade mark registrations (and applications to register trade marks) appear on publicly available database and can therefore be seen by third parties checking on the availability of a proposed new trade mark. Furthermore, the licensing of trade marks is facilitated by registration.
British trade mark law has recently been substantially revised by the Trade Marks Act 1994 in order to facilitate the registration of trade marks an in order to harmonise UK law with EC legislation.
An application to register a mark may now be made in one or more of forty-two classes of goods and services. For example, a person wishing to register a mark for computer programs would apply in Class 9. If the same person also wished to cover computer programming services, then the application should also cover Class 42.
The unauthorised use of a trade mark on goods or services falling in a class other than one for which the mark is registered will not constitute infringement of the registered trade mark, but it may constitute passing-off (see below).
For a mark to be registerable it must satisfy a number of conditions ensuring its distinctiveness. Two of these conditions are that the mark must not be too closely descriptive of the goods or services to which it is to be applied and that it must not be too similar to a mark already registered for the same class of goods or services. Assessment of whether these conditions have been met is carried out by the Trade Marks Registry, which keeps the official register of trade marks. A further consideration of registration is that there should be no possibility of deceptions or confusion being caused by the use of the mark (thus, for example, the trade mark “TEALEAF” would be considered deceptive if used in relation to coffee).
The costs involved between filing of an application and its acceptance depend on the objections raised by the Trade Marks Registry and can only be estimated beforehand. A trade mark registration can be kept in force indefinitely upon payment of renewal fees. Under the new trade mark legislation, renewal fees are due every ten years from the filing date of the application.
Before a trade mark application is filed, it is generally advisable to conduct a search of the Trade Marks Register to check that there are no conflicting marks already registered or pending.
If it is decided not to seek a registration of a trade mark, or if an application is unsuccessful, a trade mark can still be used as a so-called common-law mark. In this case, a trader who has acquired a reputation under a mark can take action for “passing-off” against any other trader who uses his or a closely similar mark in a manner such as to damage his reputation or suggest a trade connection with him.
When a trade is in use, it is advisable to mark the goods, packaging, advertising or promotional material and stationary with an indication that the mark is a trade mark. This can take the form of a ® symbol if the mark is registered or the symbol TM or SM if it is not. The symbol TM is used for the trade marks for goods whereas the symbol SM is generally used for service marks. An unregistered trade or service mark must not be represented as registered.
For further guidance, or to request our Trade Mark Guide, phone us on 029-2022-9080, or send an email to firstname.lastname@example.org.