UK TRADE MARKS - THE BASICS
For hundreds of years, traders have put symbols or marks on their goods to indicate their origin. There have been cases in the UK involving trade marks for centuries, which can be traced as far back as the reign of James I, over 400 years ago.
Although there had previously been several acts relating to trade marks, they were not comprehensive and it was not until the Trade Marks Registration Act 1875 that it was possible to register trade marks for any type of goods. It was over one hundred years, in 1986, before it was possible to register marks for services.
Registered trade marks give powerful rights to their proprietors and are very important and valuable assets.
The first trade mark registered under the Trade Marks Act Registration Act 1875, trade mark number 1, was registered in the name of Bass, Ratcliff & Gretton Limited and dated 1 January 1876.
It is still in force and is now in the name of Brandbrew S.A.
To be registrable:
Even if you know your market and competitors well, you cannot be sure that you will not infringe someone else’s rights when you use your new mark. If you do infringe (even without intending to) the consequences can be very serious.
One way to reduce this risk is to ask us to search for potentially conflicting registrations before you launch your new mark. This is strongly recommended.
The situation may be different for each country in which you intend to use the mark. A separate search and separate advice is usually necessary for each country. We can advise you further on this.
The Trade Marks Act 1994 changed the way registered trade marks are viewed in the United Kingdom.
In particular, the rights in a registered trade mark were extended, increasing the benefits of registration.
Any trader using his mark acquires common law rights through the use of the mark. However, these rights are more difficult (and expensive) to enforce than the rights which come from a trade mark registration.
Also, if you have only used your mark for a short period, and have not filed an application for registration, it may not be possible to stop someone else registering “your” mark and interfering with your right to use it.
Registration gives a monopoly on use of the trade mark in relation to the goods/services for which it is registered.
The owner of a mark can acquire some rights without registering his mark. A trader who uses a mark acquires “goodwill” in association with that mark. “Goodwill” has been defined as the quality which causes a customer to go to one particular trader rather than any other.
The owner of a trade mark can sue another trader who uses that mark in such a way as to confuse the public into believing that his goods are those of the owner of the mark. This is a “passing-off” action.
In the UK, a trade mark registration gives the proprietor the exclusive right to use the registered trade mark on those goods or services for which it is registered. A registration also gives the owner the right to stop others from using confusingly similar marks for their goods or services. In some circumstances the owner of a registered mark can stop others from using a mark for goods or services which are not similar to those for which it is registered.
You have stronger rights to use and protect a registered trade mark.
An act for infringement of a registered trade mark is generally easier, quicker and less costly than an action for passing-off.
Licensing of a registered trade mark is far safer.
Having a registered trade mark in the UK is a good platform for applications in many overseas countries.
Having a mark on the register warns others of your claim to that mark and thereby acts as a deterrent.
When the cost of changing the mark is likely to exceed the cost of registration – if advertising costs are taken into consideration, this must be the case in virtually all instances of introducing a significant new mark or brand name.
Whenever you believe the mark has a future beyond a few months.
The sooner you register your mark, the sooner you will have the advantages of registration outlined above.
Once a mark has been chosen, an application is made to the UK Intellectual Property Office. The application must specify the goods and/or services on which the mark will be used.
The Register of Trade Marks is divided into 45 administrative classes of goods and services, e.g. soft drinks fall into class 32. A charge is made for each class covered by an application.
In theory it is possible to register a mark for all goods or services in a class, and for all classes. However, there are three drawbacks to this policy:
Thus it is advisable to register a mark only for those goods and/or services on which you ( or someone with your permission) are intending to use it in the near future.
Filing a typical UK application to register a single mark for a single class of goods/services costs around £450-£500 + VAT. Each additional class costs around £145 + VAT. If no serious objections are raised, the application should proceed to registration in around six to twelve months at a further cost of around £210-£300 + VAT. The above figures include both official fees and our charges.
A UK registration must be renewed every ten years. If you are also interested in protecting your mark in other European countries in addition to the UK, the European Union Trade Mark (EUTM)1 application is an option – see our separate sheet on this topic.
The principles of registration abroad are similar to those of the UK. The details of the laws and the procedures for registration in each country vary, and you will need professional advice about each country.
In many countries, rights in trade marks are obtained only by registration. Therefore, it is unsafe to rely on use to protect your rights abroad – an application has to be made. At present, in general, a separate application is necessary in each country of interest.
However, there are also two international systems at present: (a) the EUTM system, covering the 27 European Union countries and (b) the Madrid Agreement and Madrid Protocol systems, covering a range of countries. We can advise you further on these if you wish.
It is advisable to apply for registration as soon as possible in countries where you are trading or intending to trade. This will prevent third parties from pre-empting you and registering your mark, which could prevent you from trading under that mark in that country.
As in the UK, you should search the overseas registers first, before you start using the mark and before you apply to register the mark.
1 previously known as a Community Trade Mark (CTM)
2 previously known as OHIM
This brief introduction to the selection and protection of trade marks is simplified and must not be taken as a definitive statement of the law or practice.