What is a Trade Mark?
A trade mark is a sign (perhaps a word, design, packaging, logo, shape, sound, fragrance or colour) which acts as a badge of origin, linking a particular product with the owner of the sign. The value of the trade mark is related to the strength of the reputation of its owner. Trade mark legislation throughout the world grants trade mark owners monopoly rights in the use of what can be highly lucrative assets.
Trade marks may be registered or unregistered. Unregistered trade marks may be designated by the symbol TM, and registered trade marks may be accompanied by the symbol ®. Although use of these symbols is not a legal requirement, it is a useful way to give notice to third parties and make it more difficult for them to later claim innocent infringement.
A trade mark helps customers to identify and purchase the products and services which they trust. In this way, a trade mark serves both to foster accountability to the customer and to cement customer loyalty. In this respect trade marks play a strategic marketing role.
Due to trade marks' value and power it is imperative that they be protected from unfair competitors, such as counterfeiters, who may seek to use similar signs to market inferior or different products or services.
Registration in Guernsey
The Trade Marks (Bailiwick of Guernsey) Ordinance, 2006 (the TM Ordinance) came into force on 1 June 2006. From that date, it has been possible to obtain first registration of trade marks in the Bailiwick of Guernsey. Prior to 1 June 2006, it was necessary to obtain a UK trade mark, which would then be re-registered in Guernsey so as to provide protection here.
In order to be registrable, a mark must:
- be capable of graphic representation;
- have a distinctive character (which may be either inherent or acquired through use);
- not be merely descriptive;
- be capable of distinguishing the goods or services which it represents;
- not be deceptive, contrary to morality or offend public policy; and
- not infringe the pre-existing rights of another trade mark owner.
Purely descriptive marks cannot be registered, for example 'BLUE JEANS' for jeans or 'BIG RED' for tomatoes.
There are further restrictions in respect of applications to register particular shapes. A shape sign may not be registered as a trade mark if it consists exclusively of (a) the shape which results from the nature of the goods themselves; (b) the shape of goods which is necessary to obtain a technical result; or (c) the shape which gives substantial value to goods.
Registration may be sought in relation to particular goods and services. If the categories or registration sought are too wide, there is a risk that registration may later be revoked on the basis of non-use.
The categories of goods and services used in Guernsey are the same as those commonly used in TRIPS-compliant countries. Together, these categories are known as the Nice classification system.
Applications for registration may not be made in bad faith. The registration application form requires the applicant to confirm that the trade mark is being used by the applicant in relation to the goods or services shown, or that there is a bona fide intention that it will be used in that way. Before any application is submitted, it is therefore necessary to carry out a range of searches, checking for potentially similar marks across the relevant jurisdictions.
It is still possible to re-register UK trade marks (as an alternative to seeking primary registration in Guernsey), and the costs for carrying out that process are lower. It should be noted that without Guernsey re-registration, UK trade marks will not provide protection in the Bailiwick.
A trade mark registration may be revoked if:
a. the name becomes the common name in trade for the product, eg HOOVER; or
b. the mark is not the subject of "genuine use" for a continuous period of more than five years.
A trade mark owner should therefore maintain a trade mark register that records the type and date of use of any marks in each jurisdiction in which they are registered. Reviewing this register on a regular basis will ensure that a trade mark owner does not inadvertently relinquish trade mark protection that it may wish to use in the future.
Subject to the possibility of revocation, a registration is valid for 10 years and is continuously renewable upon payment of the prescribed fee.
Registration confers on the registered proprietor exclusive rights to use the mark throughout the Bailiwick of Guernsey in respect of the goods and services claimed. As Guernsey becomes a party to various international treaties and protocols, the scope for obtaining enhanced geographical protection will increase.
Protecting an Unregistered Mark
If a mark has not been registered, or an application has been refused, this does not prevent you from continuing to use the mark; it just limits your ability to rely on the infringement provisions set out in the TM Ordinance. As a result, the remedies available for infringement of an unregistered mark are more limited, being restricted to a 'passing off' claim.
Passing off is a legal wrong based on the principle that "a man is not to sell his own goods under the pretence that they are the goods of another man"1. To be successful in a passing off claim, the plaintiff generally needs to show:
a. evidence of goodwill or reputation in the mark;
b. a misrepresentation to the public, leading or likely to lead the public to believe that the goods or services offered by the defendant are the goods or services of the plaintiff; and
c. that the complained of use is causing, or is likely to cause, damage to the plaintiff's goodwill or reputation.
The emphasis on the need to demonstrate established goodwill or reputation means that the law of passing off can only be of limited assistance until the relevant brand has developed a public profile.
Pursuing a passing off claim can be extremely time-consuming and expensive. For that reason, wherever possible we recommend that you register your trade mark.
1. Perry v Truefitt (1842) 6 Beav 66 at 73.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.