UK Trade Marks

A trade mark is a sign which when used in the course of trade in either goods or services, can serve to distinguish one trader's goods or services from those of other traders. Commonly, a trade mark is a word, a picture (logo), or a combination of the two, but other "signs" such as the shape of a product or its container, sounds or even smells may be registered as trade marks.

Rights given by registration

Registration of a trade mark gives the proprietor the exclusive right to use the trade mark in relation to the goods or services for which it is registered and the right to take legal action against competitors who might, inadvertently or otherwise, infringe his registered trade mark rights by using the same or a similar trade mark on goods or services identical or similar to the goods or services covered by the registration. Also, the owner of a trade mark registration comprising a mark having a "reputation" in the UK can sue for trade mark infringement, even if the goods or services on which the infringer is using the offending mark are not similar to those covered by the registration.

Common law rights

If a trade mark is used for a considerable time without a registration being sought the proprietor may still have some rights, known as "common law" rights, which may enable the proprietor to  protect his interest in the trade mark. However, a legal action based on such common law rights, generally known as a "passing-off" action, is much more difficult and costly to pursue than an action for infringement of a registered mark. It is very important to register your trade mark as the rights against infringement afforded by a registration have been made stronger at the expense of common law rights which have been weakened.

Choosing and using a new trade mark

When thinking of a new trade mark to use, the aim should be to find a mark which is both protectable, i.e., capable of registration, and not used or registered by others. To be registrable, the trade mark should ideally be: 

a) not directly descriptive of the goods or services;

b) not a surname or a geographical name;

c) not laudatory; and

d) not deceptive.

Once you have decided on a mark, the next step is to conduct a search of the UK Trade Marks Register which will determine whether or not the proposed trade mark is likely to infringe any registered trade mark rights of third parties.

In the search report, we advise on the likelihood of infringing any third party's marks discovered and also on the likelihood of being able to register the mark. The cost of this is usually within the mrange quoted in the table below. However, the search results can throw up some difficult problems which can take a little time to sort out and this naturally increases costs.

If the search of the Register is clear, there is still the possibility that a conflicting mark may be in use as a "common law" trade mark - we can as an additional precaution arrange common law searches through relevant trade and general directories. A search through an index of UK limited company names can also be arranged, to establish whether or not there is a company with the same name as your mark.

Trade mark registration involves:

Filing

An application is filed at the Trade Marks Registry, specifying the goods or services for which registration is sought and indicating the classes into which the various goods or services fall.

Examination

The application then goes forward to official examination by the Registry, in order to ascertain whether the trade mark is acceptable for registration purposes. In most cases the official examination results are issued by the Registry within two months from filing the application. Once the Official Letter reporting these results is received, we advise as to the next step to be taken. This is a variable matter which depends upon the Examiner's report. Matters arising from the Official Letter may be such that they can be dealt within in correspondence with the Registry.

It may be necessary, however, to attend a Hearing at the Trade Marks Registry in order to discuss the application with a Senior Examiner, particularly in a border-line case.

Publication

Once the examination has been successfully completed, the application is published in the UK Trade Marks Journal. The trade mark application is then open to public inspection and possible objection for a period of three months from the date of publication.

If an objection is raised by a third party against the application, then the matter has to be considered and appropriate action taken. It may be possible to deal with such an objection in a relative simple exchange of correspondence. Again, this area is difficult to define precisely, as much depends upon the individual case, and we can advise further at the time if it should arise.

Registration If there is no objection, or any objection has been resolved, then the application can proceed to registration on completion of certain formalities at the Trade Mark Registry. A registration certificate is then issued and the trade mark is placed on the Register for a period of ten years from the date of application.

Renewals

At the expiry of the initial ten year period the registration can be renewed for further periods of ten years on payment of the relevant renewal fee.

Consequences of non-use

It should be noted that any mark which is registered in the UK and which has not been used by the proprietor for any continuous period of five years is vulnerable to attack by third parties who may request that the mark be struck off the Register.