intellectual property

trademarks

A trade mark is simply is a sign which can stand out and distinguish your goods and services from those of other traders. It can be words, logos, pictures, even smell. To register in the UK it must be possible to represent it in words and pictures.

By registering a trade mark you get automatic rights and protection: it is your mark it belongs to you and you can sue anyone who infringes on it. New rules implemented in October 2009 modernised and changed mark applications, and build on the 2007 changes when new trade mark applications were no longer automatically blocked if there was an earlier conflicting mark.

why should I register a trade mark?
Registering a trade mark will:

  • ensure it is yours
  • help raise brand awareness
  • enable brand extension into other products or markets
  • symbolise your quality
  • avoid confusion with competitors
  • stop others from copying you
  • give you a valuable asset.

If you don't register the trade mark and someone else does it could mean that you may have to:

  • withdraw all your products
  • redesign all your packaging
  • draw up a new publicity campaign
  • pay compensation
  • buy a licence from the existing owners.

You do not have to register a trade mark as they are protected by the common law tort of ‘passing off’. If you do not register your trade mark you will have to rely on proving you have established (via the use of the trade mark), ‘goodwill' in your business and would have to show that another trader was passing off his/her goods or services as being yours, either deliberately or innocently. You would have to show you have or are likely to suffer damage as a result of such use. Your passing off rights are restricted by your geographical location i.e. the area you work in. Outside the UK rights to trade marks are often only achieved via registration.

By registering the trade mark you have statutory protection. Trade marks can also be registered abroad; there is a European Union Community Trade Mark registration system and various transnational trade mark registration systems such as the Madrid Protocol.

how do I register a trade mark?
To register a trade mark in the UK you must apply to the UK intellectual Property Office (UK-IPO). Download form TM3 from its website www.ipo.gov.uk Ensure you conduct a search to check no-one has registered or applied for the same or a similar mark.

Obtaining a UK trade mark registration takes around six months and if you do it yourself costs around £200. This includes one class of goods or services and every other class you apply for costs a further £50. Once an application has been filed the Registrar issues a filing receipt within six days. You cannot get a refund. Within two months you will get full examination report and know whether your mark is acceptable or not.

If there are earlier trade mark registrations that are the same or similar to the one that you have applied for this is no longer an objection to registration. But you will be told about these other earlier marks and then it’s up to you if you would like to proceed. If you do, the UK-IPO will write to the owners of these earlier marks and notify them of your application.

Previously an application was then published in Trade Mark Journal where it was open to opposition for a 3 month period by any of the earlier marks notified, or by any other party. However the information no longer has to be published in the Trade Marks Journal (but it will continue to be available to users online).

Other changes include:

  • The opposition period changes from a fixed three month period to two months, with a free extension to three months on request by a party considering opposition.
  • The 'cooling-off' period after opposition has begun is reduced from 12 months to an initial period of nine months (it can be extended to 18 months if both parties request it and make certain statements).
  • A standardised period of 2 months in which you can take actions such as to alter a registered mark, remove matter from the register, make a classification change, file a counterstatement to oppose registration of a trade mark etc.
  • The Registrar will have wider powers and greater flexibility including accepting late defences where someone applying to register a trade mark fails to file a counterstatement on time in response to an opposition, and to set aside decisions within six months of their making when the proprietor can prove they were unaware that their mark or application to register a mark was under attack.

If someone opposes your mark and you withdraw it or you lose your challenge to an opposition, you may have to pay towards another person’s costs. Hopefully no-one will object and you will receive your registration certificate a few weeks later. Once registered the mark cannot be changed (apart from ownership details and the surrender of goods and/or services covered by the registration). Registration lasts for 10 years, and you are given first opportunity to renew your mark before it becomes available for general registration. Hence this can last indefinitely if the registration is renewed at the appropriate time.

Trade marks are considered intellectual property so can be sold. However, get legal advice from a qualified trade mark attorney or patent agent who can advise on the correct procedure (get a list of these from the Institute of Trade Marks Attorneys www.itma.org.uk, or the Chartered Institute of Patent Agents www.cipa.org.uk).

Once the mark is registered, you are protected against someone else using, or applying for the same or a similar mark for the same or similar goods or services. Obviously it is easier to prove a mark is the same rather than similar but the final decision as to who owns the rights in any mark is a matter for the courts.

registering outside the UK
If you apply for a trade mark in the UK you only have protection in the UK and might want to consider wider protection, particularly if you export services or goods abroad. You can register in the European Union for protection in all EU countries through the Office for Harmonization in the Internal Market (OHIM) website.

If you have applied for UK registration you can also apply for an International Trade Mark through the World Intellectual Property Organization (WIPO) website.

If you get a trade mark it might make sense to register a domain name incorporating the trade mark or business name as your website address.

useful websites:
www.ipo.gov.uk
www.itma.org.uk
www.cipa.org.uk

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