It is a sign which identifies the products or services of a business and, may consist of words, slogans, musical compositions, logos, shapes, numerals, colours or any combination of these. It can also include sounds or even smells. In fact a trade mark can be anything, which distinguishes your business from those of other traders. As long as your trade mark is capable of distinguishing your business from other traders or does distinguish your business from other traders (either inherently or through use over the years) then your trade mark acts as ‘a badge of origin’ and is protectable.
In choosing a trademark you should try to make it unique and as distinctive as possible. It will not only stand a better chance of registration, but you will be buildingll be building up goodwill in a virtually uncopyable name.
Trademarks do not have to be registered to still be a ‘trademark’, however where possible registration is advisable as the protection afforded to unregistered trademarks is notoriously difficult to enforce.
Trademark registration is territorial, that is to say registration must be carried out separately in each country where it is desired to have your mark protected. The one exception is the Community Trade Mark registration, which covers all member states of the European Union. There is no such thing as a ‘world trade mark’, however there is what is known as the international trademark system, whereby after registration in the ‘home’ country, a further application is submitted seeking registration in whichever other countries (which have signed up to the appropriate international treaty or protocol) registration is sought in. A fee is payable in respect of each country where registration is sought.
Trade Marks must be registered for specified goods or services, categorised into a number of different classes. Applications can cover more than one class but official fees must be paid for each class covered. Once registered, protection lasts for 10 years, after which renewal is necessary. Before applying for registration, a search should always be conducted to ensure that the mark is free to use. Should the application be rejected by UKIPO because it transpires it is not free to use, no refund of the application fee is made.
Trade marks can not be registered if they:
- describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;
- have become customary in your line of trade;
- are not distinctive;
- are three dimensional shapes, if the shape is typical of the goods you are interested in (or part of them), has a function or adds value to the goods;
- are specially protected emblems;
- are offensive;
- are against the law, for example, promoting illegal drugs; or;
- are deceptive. There should be nothing in the mark which would lead the public to think that your goods and services have a quality which they do not.
Trademarks are not to be confused with domain names, which will be considered in a future article.
Nothing in this awareness article is intended as legal advice. If you have a specific legal requirement or query you should consult a solicitor directly.