27 May 2010
A trade mark is a sign capable of distinguishing the goods or services of one supplier from those of suppliers of similar goods or services. So long as it can be represented graphically (that is to say, in writing or in a drawing or diagram), a trade mark may consist of a word (including personal name), design, letter, numeral or the shape of merchandise or its packaging. Trade marks benefit both consumers and suppliers. They benefit consumers by giving an assurance of origin, which in many cases is tantamount to an assurance of quality. They benefit suppliers by providing a focus for advertising and distribution.
Rights to prevent others from marketing the same or similar goods or services under the same or similar sign arise at common law under the action for passing off and by registration with the Office for Harmonization in the Internal Market (“OHIM”) pursuant to Council Regulation (EC) No 207/2009 of 26 Feb 2009 on the Community Trade Mark or with the Intellectual Property Office (“IPO”) under the Trade Marks Act 1994. Signs are registered for specified goods or services that fall within a number of internationally agreed classes. Registration confers a right to prevent others from using a sign that is identical to the registered trade mark for the same goods or services. It also confers rights to prevent others from using a similar sign for the same goods or services or the same or similar sign for the same or similar goods or services where confusion is likely (including the association of another supplier’s goods or services with the registered mark) because of the similarities between the sign and the mark and between the goods or services for which the sign is used and those for which the mark is registered. Signs registered at OHIM under Regulation No. 207/2009 are known as Community trade marks or “CTMs”. Signs registered with the IPO are known as registered trade marks. Registration with OHIM confers those rights for the whole European Union. Registration with the IPO confers those rights for the UK alone.
Advantages of Registration
An action for passing off requires evidence of reputation and goodwill. That usually consists of samples of advertisements and business stationery, marketing and sales figures and market surveys which small businesses or even large businesses that are launching a new brand or entering a new market might struggle to provide. Registration, by contrast, reserves a sector of the market for the new mark from the date upon which the application to register the mark is filed.
Collective and Certification Marks
Two special types of trade mark should be mentioned, namely “collective marks” and “certification marks”. A “collective mark” may be granted to an association of suppliers. Its purpose is to distinguish the goods or services of members of the association from those of all other businesses. A “certification mark” is a mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
A registered trade mark or CTM is infringed by using a sign in the course of trade:
- which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered;
- where because (a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or (b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark; or
- in relation to goods or services a sign which – (a) is identical with or similar to the trade mark, where the trade mark has a reputation in the UK or, as the case may be, EU and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.