Trade Marks

Trade Marks

The main Act governing trade marks in the UK is the Trade Marks Act 1994.

1. What can be protected?

A trade mark is a sign capable of being represented graphically and which is capable of distinguishing goods or services. In order to be registrable, the mark must be distinctive and be able to indicate the source of the product. Trade marks may take the form of logos, words or even sounds… A check list of what can be registered can be found here.

Examples of well-known trade marks include business names such as Apple, logos such as McDonald’s double arches or the Nike slogan ‘Just do it’.

2. Duration of protection

Once registered, a trade mark will last 10 years.  This will need to be renewed every 10 years and as long as it is periodically renewed, a trade mark can last indefinitely.

Trade marks can be licensed, assigned or even mortgaged.

Advice on licensing can be found on the IPO website.

3. Infringement

If a trade mark is used without license from the owner, this may amount to an infringement.

Under s.10 of the Trade Mark Act 1994, a trade mark is infringed when:

  • a person uses a sign in the course of trade in relation to goods or services which are identical for which it is registered
  • a person uses a sign similar or identical for those for which the trade mark is registered and there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark
  • a person uses a sign in the course f trade with is identical or similar to the trade mark and is used in relation to goods or services which are not similar for which the trade mark is registered but where the trade mark has a reputation the UK and the use of the sign takes unfair advantage or is detrimental to the distinctive character or the repute of the trade mark.

Use of a sign includes:

  • affixing it to goods or their packaging
  • offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign.
  • Imports or exports goods under the sign; or
  • Uses the sign on business papers or in advertising

4. Other information

i. Domain names

Having a registered trade mark does not automatically enable its use as an internet domain name. To register an internet domain name, an application must be made to an accredited Registrar. A list of accredited and accreditation-qualified Registrars can be found on the Internet Corporation for Assigned Names and Numbers web site.

ii. Passing off

Passing off is a common law action that can help individuals protect their brand if it was not registered as a trade mark. However, this is harder to rely upon than trade mark infringement and therefore it is important to register your mark whenever possible.

In order to prove passing off, the following elements must be present:

  • The goods or services must have goodwill attached to them
  • There must be misrepresentation on behalf of the defendant
  • This will lead or be likely to lead members of the public to believe that the goods or services are those of the other company
  • The misrepresentation damages the goodwill of the claimant

iii. Community trade marks

It is possible to obtain a Community Trade Mark for your mark. Once granted, this will provide protection in all countries of the European Union. More information on register an EU trade mark here.