UK: Trade Marks... Are They Worth Protecting?

Last Updated: 7 August 2008
Article by Manish Joshi

When people talk about their property everyone immediately thinks of it in the sense of bricks and mortar, but in business there is another type which is potentially far more valuable and of interest to financiers, banks and potential investors. This is an intangible asset falling under the heading 'Intellectual Property'. This covers trade marks, patents, designs, copyright and other forms of valuable rights.

We could go into detail about all these types of rights, but for now let's look at one of the most common types, namely trade marks.

In essence, a trade mark (brand name) can be anything, which distinguishes your business from those of other traders. The most common are word or combination of words and logos. However, it could also be the shape of your products or their packaging, a slogan or musical tune used in advertising and promotion, like the direct line jingle. Less common and harder to protect are colours on their own or smells – but certainly not impossible. The question is whether there is anything that distinguishes your business from other traders – and can we put it down on paper – if so it is potentially protectable by registration.

How are trade marks protected?

In order to protect your trade mark you need to answer two main questions.

First is, where do I use the trade mark, or intend to use it? Since trade marks are jurisdictional you need to protect it wherever you use it. United Kingdom trade marks cover the UK, but what about other countries? Second, what do I use my trade mark on? In other words what goods and services do I trade in and want protection for?

Trade Marks can also be registered in a number of countries individually or even throughout the European Union via a Community Trade Mark ("CTM") which is a single trade mark registration covering all 27 countries of the European Union. There is also the International system known as The Madrid Protocol which can cover a range of countries together.

Why should I register a trade mark?

Trade Marks can sometimes be protected by the common law tort of 'passing off' which is a right gained by having goodwill simply by using the trade mark over a number of years as long as it is associated with the business conducted under the trade mark. This goodwill is recognised by the courts and may be enforced if another trader 'passes off' his goods or services as being yours and thereby misrepresents his goods and services as yours, or that you are in some way connected to him, or you have endorsed his goods and services. This is not always as easy as it first seems. You need to take action in the courts (which can be very expensive) and prove the goodwill in the business conducted and that you have suffered damage.

On the other hand, trade marks which are registered are protected under the Trade Marks Act 1994 and you have a statutory monopoly for whatever is registered. A registered trade mark in the United Kingdom is infringed by the use of the same or similar sign in relation to the same or similar goods and services for which the trade mark is registered. Remember that marks are jurisdictional so a UK registration covers the whole of the United Kingdom, and a 'CTM' registration will extend to the whole of the European Union, even though you may only actually trade in a limited locality.

It is also important to remember that in many countries the common law right of passing off may not exist and therefore rights are only gained by registering your trade mark. Therefore, it is important to quickly obtain registered rights as soon as possible and preferably before you start use.

Must I check to see if my chosen trade mark is available first?

Even if you decide not to register your trade mark, you should conduct a search to determine if others have already registered the same or similar mark and thus could prevent your use of the mark. Another trader could have earlier rights in the trade mark (or even a similar one) and could stop you using your mark at a later date and claim damages from you.

Proper checks should be conducted in each country that you propose to use the mark. If the search is clear, you should ideally register the trade mark to prevent other traders using the trade mark.

How do I register a trade mark?

In the UK Trade Marks can be protected by registering the trade mark at the United Kingdom Intellectual Property Office (as it is now known). A CTM is filed though the Office for Harmonisation in the Internal Market based in Spain and in other countries you would need to register with the relevant authority in that country and instruct a local expert to act on your behalf.

How much does a trade mark application cost and how long does it take?

The cost of registering trade marks varies from country to country. The cost of a trade mark application also depends on the breadth of goods and services covered by it. All goods and services are classified into 45 classes. The more classes covered, the higher the cost of filing.

Trade Mark applications can take between three months and a number of years to register. Trade Mark Registrations are generally renewable every 10 years, but in contrast to registered design and patent protection, trade mark registrations can be maintained indefinitely.

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.

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