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Trade marks can be found just about everywhere: they can be company names, trading names, product names, names of services, striking logos, strap lines, slogans.
They also have many forms so they can be made up one or a mixture of text, numerals, shapes, colours, smells, sounds, taste, texture, even a graphical representation of someone’s goal celebration. Trade marks are generally used to identify the goods and services of an entity and distinguish them from those of others. The principle is that there is a connection between a trader and the goods or services in question.
Trade marks can become a very valuable form of IP as they become associated with quality and customer expectations in a product or service. This is not necessarily high quality luxury products but also economy, disposability, recyclability, etc. Trade marks can be registered or unregistered which affects how they can be relied upon and enforced.
Registered Trade Marks:
To be registrable a trade mark must be: distinct so that it can distinguish the goods and services of one entity from another; capable of being described or represented for example a smell of something familiar, a certain shade of colour, a picture, drawing, word, etc., and there must be an intention to use the trade mark for the classes of goods and/or services for which it is registered or being registered.
There are some obstacles to registration, these are known as the absolute and relative grounds. The absolute grounds encapsulate issues such as: marks which include a geographical name; deceptive marks, applications made in bad faith, marks which include protected emblems, etc.
The relative grounds tend to revolve around the relationship of the proposed mark with earlier marks so you are comparing the same and similar marks with the same and similar goods. The more alike the mark and/or the goods and/or services the greater is the likelihood of confusion and the more unlikely the registration is to succeed.
Registration can be in the UK only, country by country, community or international. It depends where protection is required. Having your trade mark registered gives much stronger rights than if it was unregistered. It is simply a monopoly to use the mark for the goods and/or services for which it is registered and a right to prevent others from cashing in on your brand.
Unregistered Trade Marks:
Unregistered trade marks are those signs which are used but not registered for various reasons, such as they would have been refused registration e.g. too descriptive, or are a geographical name; or simply, the owner did not register the trade mark.
But many unregistered marks are used and can often build up a business reputation, also known as “goodwill”. This goodwill is a property right and can be protected by the common law right of passing off. There are three requirements for passing-off: a goodwill or reputation attached to the goods or services of the claimant; public deception (deliberate or otherwise) as to the origin of the goods/services; and damage to the claimant due to the defendant’s misrepresentation.
All three elements can be troublesome to prove, though not impossible by any means, but it does show that the rights granted by registering a trade mark are much easier to enforce. Passing off is not only used for protecting unregistered trade marks but has also been successful in protecting a service’s overall “get up”.
Passing off has also been used to protect a person’s name and image – there are many examples where a personalities image has been featured on products without their permission. Although copyright laws could protect an image, passing off can be used so long as the three elements are proved.
Another area where passing off has proved successful is in countering “cybersquatting”. Cybersquatters register names and then try to sell them to the person or organisation which one might expect to have a legitimate interest in them because they are their real names or trading names or registered trade marks. Passing off has been useful as domain names, registered to such speculators, have been held to be instruments of deceit.
- It is advisable to carry out a search on any potential trade marks, brands, logos, strap lines, etc., before starting to use them or make an application to register the trade mark. Searches will reveal if anyone else has the same or similar trade marks registered and if so, for which categories of goods and/or services the mark is registered. Searches can also be carried out to ascertain any use of the potential trade mark as an unregistered trade mark, which may have built up goodwill. Although these searches cannot be definitive, they give a general idea of the risks involved in using the potential trade mark and the potential for a trade mark registration to succeed.
- Registered trade marks are much easier to enforce than unregistered trade marks. We can carry out UK trade mark registrations and can make Community applications.
Registered trade marks:
Trade mark owners may not wish to use their own trade marks, or may wish to allow another or others to use the trade mark. A license is used to grant the permission to use a trade mark on another. A license may be general or limited
A mark may be assigned (sold) with or without the goodwill of a business in relation to which it has previously been used and can be partial e.g. limited to certain goods and/or services.
It is important for a trader to be able to protect their trade marks. For registered trade marks, trade mark infringement can be alleged against the same or similar marks, and also against the same or similar goods and/or services. The closer the marks and/or goods and services, the more likelihood of a successful action.
Unregistered trade marks:
Trade mark owners may not wish to use their own trade marks, or may wish to allow another or others to use the unregistered trade mark and associated goodwill. A license is used to grant the permission to use a trade mark and goodwill on another. A license may be general or limited.
An unregistered mark may only be assigned (sold) with the goodwill of a business in relation to which it has previously been used, this being different to registered trade marks, and it does make sense as it is hard to see how an unregistered trade mark could be separated from the goodwill attached to it.
- Passing off
The method of taking action against someone using another’s unregistered trade mark is that of passing off. There are three requirements for passing-off: a goodwill or reputation attached to the goods or services of the claimant; public deception (deliberate or otherwise) as to the origin of the goods/services; and damage to the claimant due to the defendant’s misrepresentation.
Ailsa is an experienced solicitor specialising in Commercial and Intellectual Property law.
To contact Ailsa you can call her direcly or call our new enquiries number 0330 058 4011 ext. 2724
Consultant Solicitor Commercial and
Intellectual Property specialist