Orr Litchfield

Solicitors and Business Lawyers

Trade marks

What is a trade mark?

Trade marks are brands or badges, which are associated with products or services in the marketplace by customers. When and where you use them, they may become associated with your business, your trading reputation and the goodwill of your business. They can become a symbol of trust and very valuable assets in their own right. The owner of a trade mark usually has exclusive rights to use the trade mark and may sell it or licence its use to third parties.

The primary legislation relating to trade marks in the UK is the Trade Marks Act 1994. It defines a trade mark as any sign which is capable (a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and (b) of distinguishing goods or services of one undertaking from those of other undertakings.

The Trade Marks Act 1994 goes on to state that a trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.

What is an unregistered trade mark?

Put simply, an unregistered trade mark is a trade mark which has not been registered in accordance with the trade mark system of the relevant country.

There is no requirement to register a trade mark in the UK. However, the owner of an unregistered trade mark may still be able to take steps to stop another person from using (or otherwise infringing) its unregistered trade mark where the other person uses the mark without permission. The owner of an unregistered trade mark may, for example, be able to file a claim for passing off.

In order to be successful in making a passing off claim, a claimant will need to be able to show that (a) it owns the mark; (b) it has built up goodwill associated with the mark; and (c) the claimant has been harmed in some way by the other person’s use of the mark.

In general terms, it is likely to be more difficult to succeed with a claim for passing off than to defend a registered trade mark.

It is permissible to use the ™ symbol with an unregistered trade mark. It acts as a warning to third parties against using it without permission. However, you should not use ® with your unregistered trade mark.

What is a registered trade mark?

A registered trade mark is a trade mark which has been registered in accordance with the trade mark system of the relevant country. In the UK the Intellectual Property Office (UK IPO) is the government body that deals with trade mark registrations.

Most countries have their own individual trade mark system. Where trading internationally, in order to secure a trade mark, the owner of the trade mark will normally need to apply in each separate country in or with which you trade. The EU has a regional system covering all EU member states, which means that an applicant can obtain broad protection from a single application.

There is also an international system which allows an applicant to file a trade mark application in multiple separate countries via a single application. However, the application will need to be processed and examined by each individual country.

Once registered, the owner of the trade mark will be able to (a) take legal action against anyone who uses its trade mark without permission; (b) put the ® symbol next to its trade mark in order to show that it has registered it and owns it and to warn third parties against using it; and (c) sell and license the trade mark.

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