What is a trade mark?
A trade mark is essentially a badge of origin. It is any sign used to distinguish the goods or services of one business from those of another. A trade mark can take various forms, the most popular being words, slogans, letters, numbers, logos, shapes and colours. Sound marks, motion marks and position marks are some of the more non-traditional types of trade mark and different jurisdictions may accept different types of trade marks.
Why register your mark?
Since a trade mark identifies your goods and services it forms an integral part of your business and can become one of its most valuable assets. Third parties may use identical or similar signs to try to take advantage of the good reputation of a brand. Without trade mark registrations you may not have the tools necessary to prevent such use. Since customers will attribute the goods and services on which a trade mark appears with a particular business by safeguarding the trade mark you are also protecting the reputation of your business.
By obtaining trade mark registration, a trader is more able to prevent a third party from using or attempting to register an identical or similar mark where confusion is likely to arise amongst the relevant public.
While it is possible in some jurisdictions, e.g., in Ireland and the UK, to obtain some unregistered rights based on the use of a trade mark, such rights are notoriously difficult, expensive and time consuming to enforce.
SMEs that have filed at least one application to protect an Intellectual Property Right are:-
- more likely to experience a growth period afterwards;
- more likely to become a High Growth Firm than firms without IP rights applications.
- more likely to become a high growth firm if those applications are at European level
What can be registered?
To qualify for registration, a trade mark must be distinctive in a sense that it is capable of distinguishing the goods or services of one undertaking from those of another. It follows therefore, that a trade mark must not be entirely descriptive of goods and services covered by it or consist solely of signs which may denote the kind, quality, intended purpose or any other characteristics of the goods or services concerned.
For example, an objection was raised against a UK trade mark application for the mark ‘NEVER CLEAN YOUR SHOWER AGAIN’ in respect of cleaning preparations, because it describes in plain language the intended purpose of the goods, and since the abbreviation ‘veggie’ has come to denote ‘vegetarian’, applications to register variations of that word alongside the name of descriptive goods or services, e.g., VEGENUGGETS, VEGECAFE and VEGE MENU would all be objected to .
What cannot be registered?
Further limitations on what can be registered include marks which are contrary to public policy or to accepted principles of morality, e.g., the marks FOOK and COUNTERFEIT DELIGHTS were both considered to be objectionable by the UK Intellectual Property Office; or by nature deceptive, e.g., ATLANTIC for seafood caught in the Pacific Ocean; or consisting of a shape which is necessary to perform a technical function or is merely ornamental.
A trade mark may also not be registered if it is identical or similar to another trade mark covering the same or similar goods or services. Marks are compared in three ways; visually, aurally and conceptually. The more similar the marks are, the more dissimilar the goods and services concerned need to be. In some jurisdictions, e.g., Ireland and USA, the office which administrates the trade mark register raises objection based on earlier rights, while in other jurisdictions, e.g., UK and EU, it is left up to the owners of earlier rights to oppose an application.
You should also be aware that, if you use a trade mark which is identical or similar to one belonging to a third party in respect of identical or similar goods or services, you may infringe their rights and action may also be brought against you.
Where to register?
A trade mark registration should be obtained wherever you plan to trade and there are several routes to registration you can take.
If you only plan to use the mark in the United Kingdom or Ireland, then national trade mark registrations would likely be the way to go. While if the EU is your planned marketplace, then filing an EU trade mark application which covers the 27 countries of the European Union may be the most cost-effective route to take.
Then, if you plan to operate internationally you may be able to decide between filing nationally in the various countries of interest or obtaining protection by filing an International Registration and designating those countries of interest, which are party to the governing treaty.
Before applying to register a trade mark we would always recommend that a trade mark clearance search be conducted to ascertain if the mark is free for use and registration. We also offer free initial consultations in order to advise of filing strategy and give guidance concerning whether a trade mark is inherently registerable.
If your business is looking to adopt or register a trade mark or would like some more information, feel free to contact Ansons on email@example.com for assistance.