A trade mark portfolio should always reflect the current commercial requirements of the company. As new marks are used and the use of others cease or change, so the portfolio should change to reflect the new circumstance. Effective portfolio management will not only ensure the usefulness and currency of the portfolio but will also save costs.

This represents an increasing problem to brand owners. The issue of counterfeit goods is often handled by Customs officials but they require the help and assistance of the trade mark owner. It is possible to register trade marks with Customs and this can greatly assist the seizure process.

A trade mark may be transferred to or acquired from a third party. In some jurisdictions trade marks can only be transferred with the goodwill of the business. Failure to record a transfer on the Official Register can affect the new owner’s ability to sue for infringement or the amount of damages awarded in a successful action. When purchasing a trade mark(s) it is prudent to carry out a Due Diligence check (see below).

Trade mark registrations can continue in perpetuity provided they are renewed at the appropriate time. The usual renewal period is 10 years. In a small number of countries it is necessary to produce evidence of use of the mark at or between the renewal dates.

It is important from a cost perspective to carefully review marks due for renewal. Renewal may not be necessary if use has ceased and will not recommence, or a revised, updated trade mark has been registered since the filing of the original mark.

In certain circumstances it is possible to licence the use of a trade mark for consideration without undermining the trade mark itself. Generally it is necessary for the trade mark owner to exercise some degree of quality control over the licensed use.

Licensing is at the heart of the activity commonly known as merchandising.

In certain circumstances licensing between related companies can affect the tax liability.

The use of a mark which conflicts with a registered trade mark may result in an action for infringement. The use of a mark which conflicts with the rights acquired by others through the use of their mark may result in an action for passing off or unfair competition.

A successful action for infringement or passing off / unfair competition is likely to lead to an injunction preventing further use and possibly an award of damages.

In certain circumstances, an Interlocutory Injunction may be granted ordering the cessation of use until the main Hearing takes place. The potentially serious consequences of a claim against you for infringement and/or passing off / unfair competition should be avoided by effecting pre-use searches (see above).

Subscription to a watching service enables you to monitor trade mark applications filed by competitors which might conflict with your rights. In the event of conflict you can oppose or seek cancellation of the competitor’s mark on the basis of your earlier rights.

Marks can be opposed or cancelled based on earlier rights in the same or a similar mark. A successful opposition will prevent the registration of a mark and may have implications for the use of the later mark.

Just as others may oppose the registration of your marks so you may oppose theirs if they conflict with earlier rights you have by registration or use.

In most countries failure to use a mark for a period of time (generally 5 years) renders the registration vulnerable to cancellation.

It is possible to cover a range of countries in a single trade mark registration.

A registration at the European Community Trade Mark Office (OHIM) provides protection in all Member States. EU registrations are unitary so a mark must be available in each Member State to be effective. A conflicting right in any Member State will invalidate the EU right in its entirety.

Through the International registration system administered by WIPO it is possible to cover a large number of countries around the world in a single registration. The territories in which protection is required are nominated by the applicant.

Both Community Trade Marks and the International registration system can offer significant cost savings compared to the equivalent national trade mark filings.

The process and the time it takes varies from country to country. After an application is filed, the local Trade Marks Office will carry out an examination covering formalities, and in some cases, the capacity of the mark to distinguish your goods and services from those of others and conflict with other trade mark applications or registrations.

In most countries, if the Office accept the mark, it is advertised to enable others to oppose its registration based on earlier rights in the same or similar mark. If there is no successful opposition, the mark will be registered.

A registration generally lasts for 10 years when it can be renewed for like periods on payment of a fee.

A search of the Trade Marks Register and the market-place should be effected before use to ensure that your use will not infringe others’ rights. Trade mark rights are essentially national so searches should be effected even against an existing mark if it is to be used in a new territory.

A properly conducted search may enable you to use before the registration process is complete.

Anything which is capable of distinguishing your goods and services from those of your competitors. A trade mark may be a word(s), logo, label, device, slogan, sound, colour or shape. Rights to a trade mark can be acquired by use as well as registration. There is a trade mark registration process in almost every country of the world.

Whilst it is not compulsory that a trade mark be used once it is registered, note that in the United Kingdom if the trade mark remains unused for any continuous period of five years following registration then the registration may be successfully cancelled by a third party unless it can be shown that there are genuine reasons for the non use of the trade mark. Similar provisions exist in most territories of the world.

A United Kingdom trade mark registration affords protection to the proprietor in the United Kingdom only. If you use your trade mark in other jurisdictions or wish to secure exclusive rights to your trade mark in other countries there are various channels through which trade mark protection can be secured. A brief explanation of these are outlined below.

Community Trade Mark

It is possible to file a trade mark application at the European Community Trade Marks Office. The rights afforded by such an application will extend to all member states of the European Union and any countries which accede to the European Union in the future. There are advantages in filing a Community Trade Mark application over National Trade Mark applications, not least the cost, which will be significantly lower when you are considering securing protection in more than a few European Community member states.

International Trade Marks

It is possible to secure trade mark protection, through a single application, in a number of countries, provided such countries are party to the Madrid Protocol which governs the International Trade Mark system. Most of the important economies of the world are signatories to the Madrid Protocol including the European Union, Switzerland, Japan, China, the USA and Australia. The costs of filing an International Trade Mark application can be significantly less than if National Trade Mark Applications were filed in each territory.

Overseas trade mark protection can be achieved by filing separate applications in each country. The national trade marks systems in most countries operate in a similar manner to the United Kingdom and other similar rights through registration.

There are advantages and disadvantages in all the above systems and we would be pleased to discuss these with you.

Trade marks are registered in the United Kingdom for a period of ten years from the date of publication and can be renewed indefinitely for further periods of ten years.

Trade mark protection is secured through registration at the United Kingdom Intellectual Property Office. (“UK IPO”). Once a trade mark application has been filed the UK IPO will examine the application to ensure it complies with the relevant legal requirements. The UK IPO will examine the trade mark for inherent distinctiveness for the goods or services for which protection is sought and conduct a search for conflict with earlier trade mark rights.

If the UK IPO raises any objections on inherent distinctiveness, it is possible to file arguments at the UK IPO to persuade it to withdraw any objections.

If the UK IPO considers any application to be in conflict with any third party rights, the UK IPO will not formally raise these as objections to the application, but will notify the proprietors of any earlier rights which they consider the application to be in conflict with and the onus for objecting to any later conflicting applications rests with the proprietor(s) of any earlier right(s) to formally oppose the application.

Formal notification of the owner of earlier marks may be avoided if agreement between a trade mark applicant and the UKIPO can be reached during the course of an application.

Once the trade mark has been accepted for registration by the UK IPO, it will publish the application in the Trade Marks Journal. Third parties, including those notified of any later conflicting application, will have the opportunity to oppose the application within three months of the date of publication. If no opposition is filed within the relevant period the trade mark will proceed to registration.

In some countries, such as the United Kingdom, it is possible for the first user of a mark to prevent later parties from using a conflicting mark or sign. However, the law generally favours the first person to register a trade mark rather than the first user and it is usually far more difficult and costly to try to stop a later user if you do not have a trade mark registration. It is therefore advisable in the United Kingdom to register trade marks.

Registration of a trade mark in the United Kingdom will give you the right to prevent the use of the same or similar trade mark for the same or similar goods or services by third parties.

Failure to register your trade mark could restrict your ability to broaden the scope of the goods or services on which you use the trade mark or limit your ability to expand your commercial activities geographically in the United Kingdom.

Before a new trade mark is adopted and put into use it is advisable to conduct a search to ensure that your proposed use of the trade mark would not infringe any third party rights. If no clearance searches are conducted prior to using a trade mark and you are later sued for trade mark infringement you could be forced to stop using the trade mark and to pay damages and costs to the proprietor of the earlier trade mark which you have held to infringe.

A trade mark is any sign used in the course of trade which can distinguish the goods and services of one business from those of another. Trade marks can include words, slogans, designs, letters, the shape of goods or their packaging, and even distinctive colours, sounds and smells.