Trade Mark & Brand Rights - FAQs

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• 1. What is a trade mark?

  • 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.

• 2. What should I do before using my trade mark?

  • 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.

• 3. Do I need to register my trade mark?

  • 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.

• 4. How do I register my trade mark?

  • 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.

• 5. How long does a trade mark last?

  • 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.

• 6. Can I register my trade mark abroad?

  • 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 is 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.

• 7. Is it compulsory to use my trade mark?

  • 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.