NOTE: The information below is an introduction to this complex field. It is not intended to replace specific advice and, necessarily compresses some legal issues for ease of understanding
Trade Marks (and trade names) serve to indicate the source of a product or service. They often form an important part of the brand of a supplier of goods / services. Marks may symbolise the qualities which the product / service enjoy - and offer a guarantee as to those qualities. The law allows protection of Trade Marks to protect business investment and to prevent the public from being mislead.
A Trade Mark is any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings
(Note: Use of someone's trade name (or a sign or symbol associated with them) may amount to "Passing Off” which is dealt with in another article)
It is possible to register a Trade Mark in the UK and the EU. Anyone who wishes to use a mark for the goods and/or services specified in the application may apply to the Trade Mark Registry of the Patent Office to register it. There is no requirement for the mark to have been used already: an intention to use in the future will be enough. As part of the application a "representation” of the mark must be supplied.
An application must be made in good faith. This should prevent "stockpiling” of marks, and attempts to register merchandiseable marks without consent (eg the name of a pop star).
More than one person may, independently, seek to register the same or similar marks without being able to claim prior use: in that case the earlier to apply should succeed.
The Trade Marks Register is divided into 45 classes: 34 for goods and 11 for services. This is designed as an aide for searching. On receipt of the application (and fee) the Registry will conduct a search for identical and similar marks. If registered the mark is protected for 10 years. Marks may be re-registered.
Challenging a Trade Mark
A Trade Mark may be challenged on two main grounds:
1. Non-use. After registration an owner must put the mark to genuine use. It may be revoked if not used in 5 years from registration or any period of 5 years. Any person may apply - even if they do not have an interest in the mark. Certain exceptions apply to this broad rule.
2. The mark has become generic. Where a mark has become so dominant it nay become the general term used to describe the product eg "tablet” and so lose distinctiveness and be revocable.
Infringing a Trade Mark
A Trade Mark is infringed by use of a sign which may be summarised as:-
1. identical to the Trade Mark for identical goods and services
2. identical to the Trade Mark for similar goods and services and there is likely to be confusion in the minds of the public
3. similar to the Trade Mark for identical or similar goods and services and there is likely to be confusion in the minds of the public
4. identical or similar to the Trade Mark for same or similar goods and the trade mark has a reputation in the UK and the use takes unfair advantage of, or is detrimental to, the character or repute of the Trade Mark
5. identifies the goods or services as those of the proprietor of the mark but is dishonest, or without due cause, or takes unfair advantage or is detrimental to the character or repute of the mark
Use covers more than merely a graphical representation of the mark.
General defences include:
• Differences in the sign or mark used
• that the complainants mark is liable to be revoked or is invalid
• that the defendants use is outside that registered by the owner
• honest practice
Almost all litigation surrounding Trade Marks will occur in the Chancery Division of the High Court. Remedies include:
• Damages and/or an action for account
• an Order for erasure of the sign
• A declaration of infringement
• Delivery up and destruction of goods bearing the offending mark
Trade Mark actions often form part of larger claims for Intellectual Property damage.
Actions involving trade marks may result in urgent applications for injunctive relief and should be treated as of the utmost importance. Clough & Willis will assist in all Trade Mark infringement and Intellectual Property disputes.