Trade marks

Your brand is probably one of your most valuable assets – it is what your customers see and how they know that they are dealing with you and not somebody else.  Your brand is what differentiates you, your products and your services from those of your competitors.  As such, and because your business’ reputation depends on it, there is no excuse for not properly protecting it and ensuring that it is used consistently.

A trade mark is any sign that is capable of being represented graphically, and which is capable of distinguishing the goods and/or services of one undertaking from those of another.  In the UK, trade marks can be protected by the law of “passing off”, and/or by registered trade marks.

Passing off is designed to protect against misrepresentation in the course of trade, and is most often used when one entity attempts to divert trade by using a mark that is confusingly similar to that of another entity.  Passing off requires three elements, namely, goodwill owned by the person bringing the claim, a misrepresentation by the accused infringer, and damage to goodwill caused by the misrepresentation. These three requirements are notoriously difficult to prove.

There also exists, however, a system of registration, which confers much broader protection.  In the case of registered trade marks, the alleged infringer only needs to use the same or a similar sign in relation to the same or similar goods or services to potentially be held to infringe.  Thus, enforcement of registered trade marks is much more straightforward, as there is no need to prove the existence of goodwill, nor that there has been a misrepresentation.  The mere identity or similarity between the respective marks and goods or services can be sufficient.

The main requirements for a trade mark to be registrable are that it is capable of being represented graphically, and that that it is distinctive (i.e. capable of distinguishing the goods or services concerned). In the UK, it is possible to register words, colours, logos, shapes and sounds as trade marks. In principle, it is possible to register almost any mark that meets these criteria, to the extent that attempts have even been made to register smell marks (although no olfactory marks have yet managed to meet the “capable of being represented graphically” test!).

You should apply to register your trade marks as soon as possible. Registration is not, however, the most important consideration – you need to make sure that your mark, or proposed mark, is free to use. If you are about to launch a new business, product or service, and do not check first that the mark you intend to use has not already been registered, or that your use of it is not likely to give rise to trade mark infringement, then you could be in for a nasty surprise!

The first thing you should do is carry out a clearance search to investigate whether your mark is free to use.  If it is, then we can apply to register it for you.  If a possible conflict exists, either with an earlier registered trade mark, or with an existing unregistered trade mark, then we may be able to advise you on negotiating a consent, or choosing alternative marks.

If someone else applies to register your trade mark, we can advise in relation to opposing third party trade mark registrations, and negotiating agreements. Generally speaking, an earlier trade mark takes precedence over a later one, but there are exceptions to this rule, particularly where the use made of the later mark is more widespread than that of the earlier mark.  We can advise on this too.