| Intellectual property law |
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| Primary rights |
| Copyright · authors' rights · related rights · moral rights · patent · utility model · trademark · geographical indication · trade secret |
| Sui generis rights |
| Database right · indigenous intellectual property · industrial design right · mask work · plant breeders' rights · supplementary protection certificate |
| Related topics |
| Societal views · orphan works · public domain · more |
A trademark is a way for one party to distinguish themselves from another. In the business world, a trademark provides a product or organisation with an identity which cannot be imitated by its competitors.
A trademark can be a name, word, phrase, logo, symbol, design, image, sound, shape, signature or any combination of these elements.[1]
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The owner of a trademark can legally defend his mark against infringements. In order to do so, the trademark must either be registered, or have been used for a period of time so that it has acquired local distinctiveness (Prior Rights).
The extent to which a trademark is defendable depends upon the similarity of the marks involved, the similarity of the products/services involved and whether the trademark has acquired distinctiveness.
A registered trademark is relatively simple to defend in a court of law. An unregistered mark relies on the law of passing off (where one party's goods or services are presented in a way that causes confusion between them and the goods or services of another party).
Rights have also been recently extended with regard to well-known marks.
The Trade Marks Act 1994 states that "a person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered" (section 10(1) of the Act). A person may also infringe a registered trade mark where the sign is similar and the goods or services are similar to those for which the mark is registered and there is a likelihood of confusion on the part of the public as a result (section 10(2)).
A person also infringes a registered trade mark where a sign is identical but the goods are dissimilar if the trade mark has a reputation in the UK and its use takes unfair advantage of, or is detrimental to, the mark’s distinctive character or reputation (section 10(3)).
The registration of trade marks in the UK is achieved through the UK Intellectual Property Office. If registration is accepted by the UKIPO, a number of exclusive rights are bestowed upon the trade mark owner. These rights allow the owner to prevent unauthorised use of the mark on products that are identical or similar to the registered mark.
When a trade mark application is made to the UKIPO, it examines the application to decide whether the trade mark that is being applied for is distinctive enough to be a trade mark.
Registration usually takes about nine months. However, this time span can be greatly increased if any objections are raised to the marks registration by owners of similar registered trademarks or by the UKIPO themselves.
Once a trademark is registered, it will be held on the register for ten years, after which it will need to be renewed in order to preserve the owner rights over it. It can also be allowed to lapse.
Trade marks are registered in one or more of 45 classes. There are 34 classes of goods and 11 for services. These classes group products that are deemed to be similar in function, and are identified by their number. For example, the registration of a trademark for a range of gymnastic and sporting articles is classified by the trademark registry into ‘class 28’. This class also encompasses decorations for Christmas trees!
Some of the main objections that the UKIPO will make when trade marks are submitted for registration are usually related to the 'distinctiveness' of the mark.
An inherently distinctive mark is the easiest to register, as it has no prior meaning. These marks are not to be found in dictionaries. A good example of such a distinctive trademark is iPod.
Words that appear in the dictionary can still be registered. These arbitrary trade marks are meaningless in the context of their use. For example Apple Computer, or Apple Corps.
Suggestive trade marks do not describe a characteristic of the product, but with some imagination, are identifiable with their connected product. For example, ColdSeal windows.
Descriptive marks use words that appear in the dictionary that describe the product to which they relate. They are usually difficult to register, and the registrar needs to prove that the mark has become distinctive through its long term use. An example of such a descriptive mark is 'Brand Protect', a brand belonging to the leading intellectual property protection firm. Such a mark is said to describe the service in which the firm specialises.
Descriptive marks can be made distinctive by the addition of other elements to the name or logo. For example, the words ‘Brand Protect LLP’ written alongside the firm’s distinctive ‘elephant’ logo collectively could be described as distinctive, as this combination is unique to this firm.
A descriptive mark can only be registered if it has ‘acquired distinctiveness’. This is achievable through its use, although proving that ‘acquired distinctiveness’ has been achieved usually relies on sales figures and advertising budgets.
Most countries exclude certain terms and symbols from being registrable. These include emblems, flags, royal insignia, and the rings of the Olympic Games. In addition, marks that are deceptive as to the country of the product’s origin and obscene marks are unregistrable.
In 1862 the Merchandise Marks Act made it a criminal offence to imitate another's trade mark 'with intent to defraud or to enable another to defraud'. In 1875 the Trade Marks Registration Act was passed which allowed formal registration of trade marks at the UK Patent Office for the first time. Registration was considered to comprise prima facie evidence of ownership of a trade mark and registration of marks began on 1 January 1876. The 1875 Act defined a registrable trade mark as 'a device, or mark, or name of an individual or firm printed in some particular and distinctive manner; or a written signature or copy of a written signature of an individual or firm; or a distinctive label or ticket'. However, any word or name that was in use as a trade mark before the passing of the Act (in August 1875) was entitled to registration, whether or not the mark fulfilled these criteria.[2]
In 1883 the Patents and Trade Marks Act substantially revised trade mark law, reducing the cost of application, and included the facility to register 'fancy words not in common use' and 'brands' as new marks for the first time.[3] Further major trade mark acts were passed in 1888 and 1905 (which both further refined definitions of a trade mark), 1919 (which separated the trademark register into Parts A and B, each of which had different registration criteria) and 1938, the last of which remained in force until it was superseded in 1994.
The current United Kingdom Trade Mark legislation is the Trade Marks Act 1994, which implements the European Trade Marks Directive into national law.
The UK Intellectual Property Office radically altered the way UK national trade mark applications were examined in October 2007. Previously, UK national trade mark applications underwent a full examination both on absolute (distinctiveness) and relative (prior rights) grounds. In October 2007, the search which formed a part of the examination of applications on prior rights grounds became an advisory search in a similar fashion to the Community Trade Mark system, bringing into force Section 8 of the Trade Marks Act 1994. No longer will the UKIPO unilaterally be able to prevent the grant of a UK national trade mark application on the basis of an earlier pending application or prior registration for a conflicting mark. Instead, it will be up to the proprietor of that right to oppose the application when it advertised for opposition purposes, although the UKIPO will still advise owners of conflicting application where citations including their marks have been sent to the applicant to assist them in making an opposition.
A fast-track application process has also been available to applicants since the 7th April 2008. [1]
Aspects of UK common law also relate to trade marks, most notably the common law tort of passing off.
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