Introduction to Trade Marks
What is a trade mark?
A trade mark is a sign used by a business to distinguish their goods or services from those of their competitors.
Typically a trade mark may consist of a word or device (often described as a logo) although more unusual signs such as sounds or smells can also function as trade marks.
A trade mark is a valuable asset, vital to attracting investment and creating licensing opportunities.
Choosing a trade mark
It is important, when starting a new business, building your brand and choosing a trade mark, to ensure that this will not conflict with trade marks already used or registered by others.
It is possible to check for earlier registrations by conducting searches of the lists of registered and pending trade marks which are available for public inspection in most countries. Conducting a proper trade mark search is a skilled business and it is always advisable to seek professional help. Failure to check that a proposed mark is properly available may lead to threats of legal proceedings from owners of conflicting earlier marks.
Typical costs for clearance searching are between £500-£600 per mark although "knock-out" searches on word marks (which can perform a useful pre-screening function) can be done from £100 per mark. These are not full clearance searches however. If the mark to be searched has a substantial device or logo element and covers a broad range of goods or services, searching costs will increase.
Trade mark searching is one of the more important steps to take when setting up a new business. It is equally advisable to take steps to register the trade mark once it has been chosen.
Why register a trade mark?
Registration of a trade mark gives the owner the exclusive right to use the mark for the goods or services for which it has been registered in that country. Broader protection arises from registration in the case of trade marks which are well known or famous.
Registration is a significant deterrent to other traders and provides concrete proof of a claim to legal rights. While marks which have been used and acquired a reputation also enjoy legal protection in a number of countries, it is generally easier to protect a registered trade mark against unauthorised use.
Cost of trade mark protection
Whichever system of registration is used, official fees are payable to the relevant local intellectual property office for filing the trade mark application. In some countries official registration fees are also payable at the end of the process.
The official fees payable for a UK trade mark application are currently £170 for the first category of goods or services claimed and £50 for each additional category.
European Union trade mark applications
Filing a European Union trade mark (EUTM) application (which covers all 28 member states of the European Union in a single filing) will involve official fees of approximately £800.
An EUTM application can cover up to three categories of goods or services for the same official fee. It often becomes economically sensible to file an EUTM application when you intend to market your goods and/or services in more than one EU member state.
In addition to the official fees, most trade mark advisors will charge you for their services for advising on the new filing and assisting in the preparation of the application. It is important to ensure that the application covers the proposed business activities since it is normally not possible to amend the categories of goods or services once the application has been filed. Our service charge for a UK filing is £386 as a basic, and £152 for each additional category of goods claimed. This fee includes a 30 minute consultation if required, whether in person, over the telephone or by correspondence.
Once the application is filed it will be examined by the relevant intellectual property office, which may object to the mark if it is considered not sufficiently unique or distinctive of the applicant's goods or services. Again it is usual to appoint a specialist advisor to deal with such objections, which may be overcome by written argument or attending a hearing.
How long does a trade mark application take?
A UK trade mark application which encounters no significant difficulties can be registered in less than four to five months. All rights in the mark, once registered, date back to the original filing.
The application goes through a number of stages before it is registered, of which the most important are the examination by the UK Trade Mark Registry and, once any objections have been dealt with, its publication in the UK Trade Marks Journal. Publication puts third parties on notice of the application and gives them an opportunity to object it they consider that the new application conflicts with their earlier rights.
Marks filed under the EUTM registration system are usually accepted and registered within six months of the original filing. Again, the rights obtained by EUTM registration will be backdated to the original filing date.
Protecting your trade marks globally
In addition to protecting your trade mark in the UK and/or throughout the EU, it is possible to protect your trade mark by way of registration in most countries of the world.
Since 1996 it has been possible to obtain an International Registration under the Madrid Protocol designating countries of particular interest. At present, more than 91 countries are members of the protocol and include both West and East European countries as well as the US and certain far Eastern countries such as Japan, Singapore and China and some African states. The list of members grows monthly and this system of protection for those with more global interests can be very useful.
Trade mark clearance searches and watching services
Once your trade mark has been chosen, cleared by the carrying out of full availability searches and an application has been filed, it is prudent to set up a watch service in your country/countries of interest, to ensure that a competitor does not seek to register a mark which is identical or similar to yours. A watching service can be set up on an annual basis for a relatively low cost.
When to use ™ and when to use ®
The letters ™ indicate that a name (whether word or logo or a combination of both) is being used to identify a product or service which, through use, may have acquired common law rights. They can be used whether or not the mark is actually registered.
The symbol ® can only be used by the proprietor of a registered trade mark. It is illegal to use this symbol if the mark is not registered. The ® indicates that the owner of the trade mark has statutory rights in the mark by which he can sue users of an identical or similar mark on the same or similar goods or services for infringement of his rights. The ® does not mean that the registered proprietor does not also have common law rights which he has acquired through use and which are additional to the statutory rights conveyed by the registration.
Domain name registration, watching and disputes
Domain names are an important consideration and integral part of any intellectual property portfolio. Just as a trade mark is used to distinguish and identify the goods or services of one trader from those of others in the 'real world', a domain name performs this function on the Internet.
We can register your domain names not only as domain names but also as trade marks. For major brands, or where business is anticipated over the Internet, domain names should be cleared and registered in parallel with trade marks.
When filing an application to register a domain name as a trade mark the qualifier .com, .co.uk etc, is not taken into account when the UKIPO is carrying out similarity comparisons against earlier trade marks since it is only the individual identifying element in which exclusive rights are granted.
Once your domain name has been registered, we recommend that a domain name watching service is set up. This service alerts you when third parties attempt to register domain names which reflect their existing trade marks, or are confusingly similar to existing trade marks in an attempt to disrupt legitimate business activities.
We are experienced in dealing with cybersquatters and can represent you in dispute resolution procedures, which are handled by the Internet Corporation for Assigned Names and Numbers (ICANN) and Nominet.
Case law under the major dispute resolution procedures is now firmly in favour of the trade mark owner in cases of cybersquatting and dispute resolution procedures have become established as a quicker and more cost effective alternative to litigation. Remedies available include the transfer or the cancellation of the cybersquatting domain name.
In addition, we are often able to secure the anonymous transfer of a domain name through intermediaries at low cost.