Trade marks

A trade mark is a sign which can be used to identify the person or business offering goods and services. The most common trade marks tend to be brand names and logos. For example, NIKE is a trade mark, as is their swoosh logo.

The registration of a trade mark gives the owner the right to prevent others using the registered mark, or similar marks, in relation to the goods and services covered by the registration, and in relation to similar goods and services.

Before launching a new brand, businesses often conduct ‘availability searches’ to ascertain if there are any earlier rights which may conflict with their plans. If your mark is registered, a competitor may come across it, and change their mark to avoid conflict.

To obtain registered protection in the UK, trade mark applications are filed via the UK Intellectual Property Office (“UKIPO”). To obtain registered protection in the throughout the EU, trade mark applications are usually filed with the EUIPO in Alicante.

It is also possible to file applications in other countries outside of the EU. Beck Greener have the knowledge and experience to advise on an appropriate strategy for protecting a brand in the jurisdictions of interest. We can also get trade mark applications on file in all of the countries of interest.

In the UK and EU, any sign which is capable of distinguishing the goods or services of one undertaking from those of other undertakings may be registered as a trade mark. Most commonly, this consists of words and/or logos, however it is sometimes possible to obtain trade mark registrations for colours, colour combinations, the shape of goods or their packaging, sounds and even movements. Other jurisdictions do not always allow some of these types of mark to be registered, though almost all at least allow for protection of words and logos.

It is not essential that any searching be conducted before an application for a trade mark registration is filed. However, it is sensible to conduct availability searches before adopting a new trade mark, as this may reveal earlier rights which could be used to oppose any application you may file, or to bring infringement proceedings against you for any use you make of your mark.

Beck Greener conduct trade mark availability searches frequently and then advise on the results. Our experience enables us to advise in a comprehensive manner on the goods and services to cover in possible trade mark applications, and the best strategy for filing applications in the jurisdictions of interest. Sometimes we advise that it would be more sensible to adopt a different mark.

A trade mark application typically includes:

A representation of the trade mark.

The name and address of the applicant (i.e. the person or entity which will own the right).

A ‘specification’ listing the goods and services the application is intended to cover.

A trade mark application includes a specification which should set out the goods and services in relation to which the trade mark is being, or is intended to be used. In the UK and EU, and most countries around the world, applications are filed in one or more ‘classes’ from the ‘Nice Classification’. The Nice Classification divides all goods and services into 45 classes. For example, clothing is in class 25, veterinary services are in class 44.

In some countries, including the UK, there is a requirement that the applicant has a genuine intention to use the trade mark in relation to the goods and services in their specification. In others, this is not the case. In some jurisdictions (such as the EU) it is often advisable to file with very broad specifications covering a wider range of goods and services than the applicant is necessarily interested in, so as to give broader protection. In others, it is appropriate to cover only the specific goods and services of interest to the applicant.

It is possible for individuals to prepare and file trade mark applications themselves, although there is the risk that their brand will not be adequately protected. Trade mark attorneys train for a number of years, giving them the skill to draft specifications which are likely to take account of the applicant’s current and potential future interests, as well as competing earlier rights. Trade mark attorneys, because of their experience, are also better equipped to address any objections which may arise from the respective Trade Mark Offices, and to deal with oppositions which may arise from third parties.

In most jurisdictions, an applicant for a trade mark can be an individual, or a ‘legal person’ such as a company or partnership. In most countries trade mark applications may also be held jointly.

In almost all jurisdictions around the world, including in the United Kingdom and in the countries of the EU, trade mark registrations last for ten years, although they may be renewed for further periods of ten years in perpetuity. In theory, a trade mark registration can be kept alive forever.

There is no such thing as a worldwide trade mark. Trade marks are territorial. For example, British trade mark registrations only have effect in the United Kingdom, and EU trade mark registrations only have effect in the EU. The majority of countries have their own Intellectual Property Offices which can receive and consider trade mark applications.

There a system for filing trade mark applications in a number of jurisdictions centrally with the World Intellectual Property Organisation (WIPO) in Geneva. These are then processed and forwarded to the national registries concerned. This is known as the ‘Madrid System’. It allows applications to be filed in a large number of countries around the world, if based on an earlier National registration, subject to a number of conditions. Some countries are not part of the Madrid System.

Generally speaking, trade mark attorneys charge for the time they spend on a case. However, there are standard charges for certain more straightforward activities, such as filing trade mark applications. Provided no objections or oppositions arise, Beck Greener can typically file a UK trade mark application in a few classes and prosecute it to registration for around £900, and, similarly file an EU trade mark application and prosecute it to registration for around £1,500. We are always willing to provide an estimate before proceeding with any action.

After a British or EU trade mark application has been filed, it is examined to check that it meets the legal criteria for trade mark protection. For example, an application may be objected to if the trade mark is deemed to be descriptive of the goods and services in issue. If objections are raised, a period is set in which to submit arguments in an attempt to overcome the objection.

Both the UK and EU Trade Mark Offices conduct brief searches for earlier rights which they consider may conflict with the application. However, these Offices do not object to the mark becoming registered despite the existence of these earlier rights. Instead, they take the view that it is for the proprietors of those rights to bring opposition proceedings against the application. This is not the case in other jurisdictions (for example the United States), which do refuse applications on the basis of the earlier rights of third parties.

If UKIPO or EUIPO raises no legal reason why the trade mark application should not proceed, it is ‘published’. This gives the owners of earlier rights a number of months in which to object to the application being granted. If no oppositions are forthcoming, or if they are overcome, a registration certificate will be issued shortly thereafter (unless a late objection is raised, which is rare).

In most countries, trade mark applications are published before they are allowed to proceed to registration. This provides a short period of time (typically a few months) for proprietors of potentially conflicting earlier rights to oppose registration. Trade mark watch services notify us of the publication of applications for marks identical or similar to the mark watched, thus giving proprietors time to file oppositions.

If someone is using an identical/similar trade mark to yours, there is the possibility of bringing trade mark infringement proceedings against them. In England and Wales, such proceedings may be brought before the High Court or the Intellectual Property Enterprise Court. The most common infringement claims are based on the ground that someone else is using an identical or similar mark in relation to identical or similar goods and services, and as such the public are likely to be confused.

In the absence of a trade mark registration, it may still be possible to bring legal proceedings against others who are using identical or similar signs to yours. In the UK, this is achieved via an action known as ‘passing off’. Generally speaking, in a passing off action the owner of the trade mark has to prove the existence of rights to the sign, and the scope of those rights. This can be very onerous. It is much easier to take action against a business using a similar sign when the trade mark is registered.