Top 10 Most Commonly asked Questions about Trade Marks
Curious about trade mark protection? We have collated some of the most frequently asked questions we receive relating to trade marks below. This information relates to trade mark protection in the United Kingdom.
If you have questions regarding trade mark protection further afield, please get in touch – we have correspondent law firms in most jurisdictions and assist many clients with their worldwide trade mark portfolios.
- What can be a trade mark?
A trade mark is a “sign” capable of being represented which helps to distinguish the goods and/or services of an entity from those of others. This is its “essential function”. Usually, trade marks take the form of a word or a logo (or both), but in the UK they can also be sounds, colours, 3D shapes, patterns, moving images, holograms or smells/tastes.
2. Do I need a trade mark?
Strictly speaking, trade marks do not need to be registered in the UK to enjoy protection, as it is possible to establish and develop unregistered rights through use which are protected through the law of passing off. However, having a registered trade mark gives the owner far more extensive rights than an unregistered right. A registered trade mark also makes it far easier to prove your rights and less expensive to enforce them.
We would therefore recommend a trade mark is registered. Please see our guide “Why register a trade mark” for a more detailed exploration of this topic.
3. Can I get a worldwide trade mark?
There is no such thing as a worldwide trade mark, as trade marks are territorial in nature and only afford protection in the jurisdictions in which you have filed.
That said, the “Madrid System” under the administration of the World Intellectual Property Office (“WIPO”) allows brand owners to file and register a trade mark in multiple countries in a single application, subject to additional fees commensurate to the number of jurisdictions covered, which is then examined by each of the designated countries with a view to the application being approved or rejected by each country. Thus, these rights are registered as separate national trade marks, so you need to select the countries you wish to secure protection in.
4. How do I register a trade mark and what is the process?
In order to register a trade mark in the UK, you must submit an application to the UK Intellectual Property Office (“UKIPO”). The application is then examined by the registry to determine if it can function as a trade mark and, if accepted, it is then published for opposition purposes. Third parties then have 2 months to object to the application (which can be extended by one month). If there are no oppositions, the mark will proceed to registration. It normally takes 4 to 6 months if no objections or oppositions are raised.
5. What should my trade mark cover?
A trade mark is registered for certain goods and/or services which fall under the “Nice classification”. There are 45 different trade mark classes and within each class is a list of specific terms.
You should ensure that you cover any goods/services which you are currently using the trade mark for, or which you intend to use the trade mark for in the next five years.
You will not be able to add any additional goods or services once the trade mark has been filed.
It is important that you do not file the trade mark too widely, otherwise this may lead to legal issues in the future. We can provide guidance on the coverage of your trade mark as part of the filing process.
6. I am thinking of updating my trade mark – do I need to file a new application?
Unfortunately, it is not possible to amend an application once it has already been filed and/or registered. So, if you are intending to use your mark for more goods and services than are covered by the original application or you are intending to alter the mark or logo in some way, it is best to take advice on whether or not to file a new application.
As a general rule, you should use your trade mark in the exact way that it has been registered, otherwise it can become vulnerable for cancellation for “non-use” if it has been registered for more than 5 years and used in a different format. If it can be cancelled, it will make it difficult and more expensive to enforce your rights. However, if there have been some minor changes to your mark or logo, these may be considered an acceptable variation of the registered trade mark such that they can be relied upon to show that the mark has been used within the five-year period.
Where the line is drawn between what is and is not acceptable is often difficult to determine, and there have been some recent interesting developments in the case law on this subject. As such, you should seek legal advice in respect of any specific updates to your trade mark to ensure you are appropriately protected.
7. How long do trade marks last?
Trade marks in the UK must be renewed every 10 years (subject to a fee) but, in theory, subject to renewal and provided they have not been challenged by third parties, can last indefinitely. Indeed, the world’s first registered trade mark was filed in 1876, namely the Bass “red triangle” beer label, which can be seen on the countertop in Édouard Manet’s Un bar aux Folies Bergère, pictured below. According to legend, a Bass employee waited in line overnight on New Year’s Eve to ensure the company would be able to secure trade mark “No. 1” on 1 January 1876 and it is still registered today.
8. What happens if I don’t use my trade mark?
In the UK, unlike some other jurisdictions, it is not necessary to file any evidence of use in order to maintain your trade mark. However, it is still important that your trade mark is used for the goods and services covered and in the form in which it is registered. Should your trade mark not be genuinely used in the UK for a continuous period of five years, it may be challenged, in whole or in part, by a third party for non-use.
9. What do the ® and ™ symbols mean?
In the UK, the ™ symbol has no legal significance and is generally used to symbolise that you are claiming you have unregistered rights in a mark, or that your mark is not yet registered (i.e. is a pending application).
On the other hand, the ® symbol can only be used to indicate that the proprietor’s mark is registered in the UK. It is a criminal offence under the Trade Marks Act 1994 to falsely indicate that a mark is registered in the UK.
There is no legal requirement in the UK to use either the ™ or the ® symbol and a trade mark is protected whether or not the ® symbol is used.
Please note that the use of these symbols differs from country to country, therefore, if you operate in multiple countries, you should check the use of these symbols in those jurisdictions beforehand.
If your trade mark is registered, you may have an action in trade mark infringement. If your mark is unregistered, and you have acquired reputation/goodwill in the mark, you would need to rely on the common law action of passing off.
10. Help! Someone else is using my trade marks, what should I do?
We can assist with resolving the infringement of your rights – in most cases, an amicable settlement can be reached without the need to go to court, however, we can assist with all elements of the litigation process, should litigation prove necessary.
