Trade marks: the basics

What is a trade mark?

The UK's 1994 Trade Marks Act defines a trade mark as: "which is capable 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 of distinguishing goods or services of one undertaking from those of other undertakings".

In essence, a trade mark can be anything which distinguishes your business from those of other traders. A trade mark may be a word or combination of words, it may be a logo, it may be the shape of your products or their packaging, it may be the colour you use to promote your goods and services, it may be a musical composition used in advertising. 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.

How are trade marks protected?

In the UK, trade marks are protected in two main ways.

Unregistered trade marks

An unregistered trade mark - or more precisely the goodwill associated with the business conducted under the unregistered trade mark - is protected via the common law tort of 'passing off'. If you can prove that you have established, via the use of the unregistered trade mark, 'goodwill' in the business associated with that unregistered trade mark, then this goodwill is protectable. Goodwill is essentially a reputation in the mark.

If another trader 'passes off' their goods or services as being yours and misrepresents in some way, either deliberately or innocently, that their goods and services are yours or you are in some way connected to them or you have endorsed their goods and services, then if you can show that you have or are likely to suffer damage as a result of such use, you will have a remedy in passing off.

Registered trade marks

Trade marks are also given statutory protection under the 1994 Trade Marks Act. Trade marks can be protected by registering the trade mark at the UK Intellectual Property Office. A registered trade mark in the UK 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. Additionally, registered trade marks with reputation are infringed by the use of the same or a similar sign without due cause where that use would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Trade marks can also be registered in foreign countries such as the US and Canada and across the whole of the European Union via a so-called 'European Union Trade Mark'. There are also various trans-national trade mark registration systems such as the international system known as the Madrid Protocol.

Why should I register a trade mark?

The problem with relying on passing off in the United Kingdom is that you have to first prove that you own goodwill in the business conducted under the trade mark. Also, by definition, passing off rights are limited to the particular geographical location within which you trade. If you have only traded in Somerset and you are only known in Somerset, your passing off rights will be limited to Somerset.

By contrast, if you register a trade mark, there is a presumption that the trade mark registration is valid. If you register your trade mark as a United Kingdom Trade Mark Registration, your rights will cover the whole of the UK. If you register your trade mark as a EU Trade Mark your rights will extend to the whole of the European Union, even though you may only actually trade in a limited locality at present.

Outside the UK, rights to trade marks are often only achieved via registering the trade mark. In many countries, the proprietor of a trade mark is deemed to be the 'first to file' not the 'first user' of the mark. Therefore, it is important to obtain registered protection before someone else does.

Do I need to register my trade mark?

No, but for the reasons given above it makes good sense to register your trade mark. However, you do not have to register a trade mark to use it. Trade mark registrations are designed to stop others using the mark and are not a pre-requisite for your use. However it is possible that if you do not register your trade mark, other traders could stop you using your mark at a later date. 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.

What should I do when I have chosen a trade mark?

You should first conduct a search in the country or countries where you are to use the trade mark to determine if any others have registered the same or similar trade mark first and thus could prevent your use of the trade mark. Then, if the search is clear, you should register the trade mark to help prevent other traders using the trade mark.

How do I register a trade mark?

A trade mark is registered by filing a trade mark application at the trade mark office of the country or countries where you wish to trade. The UK office is the Intellectual Property Office (IPO). Trade mark applications can take between four months and a number of years to register. Trade mark registrations are generally renewable every 10 years but can, in contrast to registered design and patent protection, be maintained indefinitely.

How much does a trade mark application cost?

The cost of registering a trade mark 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. In the UK the cost of an online application at the IPO starts at £170 with an additional £50 for each additional class.