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Trade marks – why bother?

Almost every business has at least one trade mark or logo which could and should be registered as a trade mark. There can be drastic consequences if marks are not registered or checked before being used.

It is common knowledge that companies like Coca-Cola, Procter and Gamble and Mars have huge portfolios of valuable trade marks which are used to build up reputation and goodwill in their products. However, the benefits of registered trade mark protection apply to small companies and service companies too. Whether your company provides financial services or makes and sells bicycles, the name you operate under and any names or logos attached to your product lines are valuable intellectual property and worth protecting as important marketing tools and means of identifying your business.

You should be aware that registering a name at Companies House or as a domain name DOES NOT mean that it can be registered as a trade mark or that you are free to use it.

A trademark is any sign which can distinguish or identify the goods or services of one business from those of another. It can be a name, logo, picture and even in some cases a sound, shape or smell. It is in essence a “badge of origin” which allows customers to identify products and services as coming from a particular business.

There is no legal requirement to register a trade mark. It is possible to trade under a mark without ever carrying out a trademark search or making an application to register a mark.

We do not recommend this course for several reasons, namely:

  1. You are missing the opportunity to acquire a valuable asset which could be licensed to others and will be significant in any sale or listing of the business. Registered trademarks need renewing every 10 years in the UK and EU and, provided that they are still being properly used and the renewal fee is paid, can last indefinitely.
  2. If there are other people who have already registered similar marks for similar products or services, then you may be infringing their marks. The court can award an injunction to stop use of the mark which would waste the effort and costs already expended on advertising and marketing. Damages and an account of profits can also be awarded.
  3. You will not be in as strong a position to stop other people from misusing your mark. It is much more difficult and expensive to succeed in a passing off action for an unregistered mark than it is to do so in an action for trademark infringement.
  4. There could be customer confusion between your business and products and those of someone else, which may well, damage your reputation and lead to loss of sales.

In a recent case with which we dealt, we were asked to register a trade mark after launch of a new product line and discovered that a similar mark was already registered to a competitor. All the design, advertising and marketing material needed to be changed to ensure that our client's products did not infringe the existing mark.

Not all marks which are used in trade can be registered. If a mark is too descriptive of the goods or services for which it is being applied for (e.g. TOYS DIRECT for an on-line toy business) or if it is deceptive then it will not be accepted onto the trademark register. A mark will also be refused registration if it is the same or similar to any earlier marks for identical or similar goods or services.

Trade marks operate on a territorial basis. The UK register operated by the Patent Office covers the UK, the register operated by OHIM covers the EU countries and each other country has its own register. This means that, depending on the area in which your business operates, you may want to consider searching and/or making an application for a registered trade mark in a number of different countries to obtain full protection.

Once a trade mark has been registered in a particular territory, then the symbol ® or the letters “RTM” can be used next to the mark as a way of informing the public that the mark is registered. It is not compulsory to use these symbols and it is necessary to be cautious as it is an offence to use them if the mark is not registered in that particular territory. The symbol ™ can be used even where a mark is not registered as it merely indicates that the mark is being used in a trade mark sense.

We recommend that:

  1. Before launching a new business or product you obtain a search of the register in the relevant country or countries and possibly also a search of industry journals and websites to see if the proposed mark is available for use.
  2. Even if you have been operating for some time under an unregistered mark, then you should consider obtaining a search to see if there are any earlier conflicting marks.
  3. If the searches are clear, you consider making an application to register your mark or marks in the countries of interest.
  4. You check your registrations periodically to ensure that they still accurately reflect the marks you are using and the type of products and services on which you are using them.
  5. You ensure that wherever the marks are used within your organisation, they appear in a consistent form and with the correct symbols in order to strengthen the mark and therefore its enforceability.
  6. You keep a watch for any possible infringers using your marks and take speedy action to stop the infringement.

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