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What is a Trade Mark?
A Trade Mark can be anything (e.g. a word, picture, shape, smell or sound, or a combination of these) which is distinctive, i.e. which distinguishes the goods and services of one company from those of another company.
Why should I register my Trade Mark?
A registered Trade Mark gives you a monopoly to that Trade Mark. You have a statutory right to take action against others who may use that Trade Mark (or a similar Trade Mark) in respect of the goods or services (or similar goods or services) for which your Trade Mark is registered. This is known as an action for Trade Mark Infringement.
Your Trade Mark registration will be shown on the Trade Mark register, and anyone making a search will find it (see below). This has a strong deterrent effect, and will often cause other companies to choose a different Trade Mark rather than run the risk of infringement.
You can prevent other companies from achieving registration of identical or similar Trade Marks in respect of the same or similar goods or services. In the United Kingdom, the Trade Mark Registry (the government body responsible for Trade Marks) will actually raise your Trade Mark as a bar to a later conflicting Trade Mark.
In many overseas territories the only Trade Mark rights that are respected are those obtained by registration and it is often a case of “first come, first served”. If you do not register your Trade Mark at an early stage, you may find that you cannot launch a product or service in a particular country, because another party has registered your Trade Mark (or a similar Trade Mark) already.
A Trade Mark registration is essential in anti-counterfeiting measures. Trading Standards Offices or Customs Offices will be prepared to enforce a Trade Mark registration if counterfeit products are in circulation.
Do I have any Trade Mark rights if I don’t register my Trade Mark?
If you use an unregistered Trade Mark in the United Kingdom for a considerable period of time, you may acquire rights to that Trade Mark. These rights would be “common law” rights, which could be enforced under an action for “passing off”. This is a difficult action to prove. In many other countries you do not acquire any rights to a Trade Mark through usage.
I have a new Trade Mark, what should I do before the launch?
It is important that you conduct searches to make sure that you will not infringe any Trade Mark registrations. Infringement has potentially serious consequences, as you may be prevented from using the Trade Mark and you may have to pay damages to the Trade Mark proprietor.
We would recommend that searches are conducted at a very early stage during the Trade Mark creation process as it is commercially damaging to discover shortly before launch that there is a potential Trade Mark problem. This may delay the launch of the product onto the market, at great cost and inconvenience.
I want to register my Trade Mark, what do I need to do?
In order to file an application in the United Kingdom you would need to provide us with the following details:
• A copy of the exact Trade Mark.
• The goods or services which will be provided under the Trade Mark.
• The name and address of the Applicant who will own the Trade Mark.
I want to register my Trade Mark world-wide, can I do this?
Yes, but this would be very expensive. Trade Marks are generally considered to be territorial rights and you would need to register your Trade Mark in each country of interest. There are some filing systems, which enable a single application to cover certain groupings of countries (e.g. European Union). Otherwise we would recommend filing only in the countries, or groupings of countries, of present and future commercial importance.
What is the cost of registering a Trade Mark?
The cost varies according to a number of factors. In particular the country of interest and the breadth of protection that is sought will effect the initial filing cost. Additional fees will be incurred during prosecution of each application, and these additional fees depend upon whether or not problems arise, for example official objection, or oppositions by other parties.
We would recommend that you discuss your requirements with us, and we can give you a quotation.
Are there any limits to what can be registered as a Trade Mark?
Yes, generally speaking a Trade Mark must be distinctive to be registrable. For example, it would be very difficult to register the Trade Mark “SOAP” in respect of a bar of soap, or any other word that should be free for general use in respect of the goods or services of interest.
In the United Kingdom, the Trade Mark Registry has the right to object to applications if it is felt that the Trade Mark does not satisfy the legal requirements. We can advise you beforehand if objections are likely.
How long does a Trade Mark registration last?
It varies from country to country, but the usual period of registration is for 10 years. If you wish to maintain the registration after 10 years then you must pay a renewal fee, and the Trade Mark will be renewed for another 10 years. Potentially the life of a Trade Mark registration is endless, as long as it is renewed.
How should I mark my Trade Mark correctly?
Distinguish your Trade Mark from any text - e.g. use capital letters or a distinctive font.
Do not use your Trade Mark in a generic sense so that it becomes the general name for the goods.
• If your Trade Mark is unregistered - use the letters TM next to it.
• If your Trade Mark is registered - use the symbol ® next to it
How should I look after my Trade Mark registration?
Use your Trade Mark - if it is not used it can be attacked.
Enforce your Trade Mark - if you allow others to use your Trade Mark without permission you will weaken your rights.
Police your Trade Mark - keep a watch on your competitors and subscribe to a Watching Search to that you are notified of any similar Trade Mark applications. A Trade Mark registration is a valuable piece of property and needs to be looked after.
