Trade marks are everywhere. People, as consumers, are exposed to hundreds of marketing messages every day. It has been estimated that the average London commuter, in one 45 minute journey is exposed to more than 130 adverts. You can guarantee that 99.9% of these adverts will contain a trade mark of some description. Not to mention the trade marks that might appear on that commuter’s clothing, on the mp3 player he is listening to, on the cards in his wallet, in the shape of the bottle of juice he is carrying, in the newspaper he is reading… you get the picture.
A trade mark is primarily an indication of source. So they are important because they help a business to protect the brand and reputation it has built up in relation to the goods or services it provides, by giving them certain rights over that mark. They also protect your customers by helping them to avoid confusion and make informed purchasing choices, or to put it another way, making sure that your customers know where to come back to time after time to purchase your fabulous (naturally!) product or service.
A trade mark can consist of any word, logo, symbol, slogan, colour per se, design, three dimensional shape, sound or even in theory smell which is used to identify and distinguish the goods or services of one manufacturer or merchant from the goods and services of others.
Some famous examples of these different types of trade marks instantly spring to mind. The word “CocaCola,” the Nike “swoosh” logo, the slogan “Have a break. Have a Kit-Kat!” the shape of a Toblerone bar and Nokia’s famous original ring tone as used in Trigger Happy TV are all examples of registered trade marks.
A trade mark must always be registered together with a list of the goods and/or services that it is intended for the mark to be used on. Thus it is possible for the same mark to be used by different proprietors for different goods, hence the existence of trade marks for PENGUIN for biscuits and PENGUIN for books.
Marks or terms cannot be registered if they are:
• Descriptive of the goods and/or services, or their quality, quantity, intended purpose, geographical origin or other characteristic. (for example OXFORD SOAP for soap made in Oxford)
• Not distinctive (e.g. no inherent distinctiveness such as “$”)
• Generic in current language or the relevant trade (for example, ESCALATOR was originally a trade mark but has now become generic)
• Deceptive (for example the word KASHMEER for clothing which is not made of cashmere)
• Immoral or contrary to public policy
• Specially protected emblems (for example the Royal Coat of Arms)
• For three dimensional shape marks only – shapes which are typical of the goods themselves, shapes which are functional and shapes which add substantial value to the goods.
• Already registered by somebody else for the particular goods and services in question.
It is best to select a “strong” trade mark if possible, which has no descriptive meaning at all. Good examples are invented terms such as EXXON, KODAK and XEROX. Or alternatively, choose a trade mark with no meaning in relation to the particular goods and services, for example APPLE for computers, or PICASSO for cars. The rationale behind this is that terms which are descriptive should be kept free for all traders to use.
Why you should register your trade mark
You may have a unique or distinctive name which sets your business apart. You may spend a significant amount of money, time and effort building up a brand and a reputation associated with that mark. Not registering your trade mark puts your business at risk from dilution of your brand value by others, loss of goodwill or worse loss of business to others. As the saying goes, if it is worth copying, then it is worth protecting. Here are some other reasons why it is worth registering your trade mark:
• Prevent others from taking advantage of the goodwill you have built in your mark, without the need to demonstrate Passing Off
• The early bird catches the worm – trade mark registration systems are based on a first-to-file principle, so if someone registers the mark you want before you do, there is very little that you can do about it.
• Protection for the lifetime of your business – a trade mark can be kept alive indefinitely, provided that it is renewed every 10 years
• Value for money – registering a trade mark is relatively inexpensive, compared to other forms of registered IP protection
• Commercialisation – trade marks can be sold, licensed, or used as security for a debt
• Brand building – registering a trade mark provides a solid and protectable foundation upon which to build a brand and a reputation for a business.
The need to maintain, monitor and enforce your trade mark
Registering your trade mark is the big first step, but for best value a trade mark owner should manage, monitor and enforce its rights.
• Mark your trade mark as such – use TM or ®
• Don’t assume because you have registered a particular company name or domain name that you will have trade mark rights to the name; this is not the case.
• Use your mark as a trade mark and make sure others do too or you risk it becoming a generic term – YO-YO and ASPIRIN are examples. “Googling” has now become a verb, with the term in common parlance among both consumers and the trade. However, Google’s legal team constantly battle and monitor use of their trade mark to prevent it from becoming generic – e.g. monitoring content in the press and ensuring that any dictionary entries for Google show its trade mark status.
How to register your trade mark
Trade Marks are national rights and need to be registered in each territory of interest. An important exception is the availability of an EU-wide trade mark registration – the Community Trade Mark (CTM), which covers all 27 member states.
Consulting a specialist (e.g. trade mark or patent attorney) to assist you with the process and ensure appropriate protection is always advisable. It is possible for you to file your own applications online at www.ipo.gov.uk (UK) or www.ohim.eu (for CTMs). Your trade mark should be filed with the chosen goods and services specified. Once published, an opportunity is provided for third parties to oppose or it proceeds to registration. In the UK, the whole process can be completed in about 3 months.
by Donna Trysburg, from Ellis IP, ask Donna or Michael Ellis about IPSure – a new service for startups providing entry level access to professional IP services. You can also read more about Intellectual Property with reference to the technology industries is this article by Michael here.