What Is A Trade Mark?
Any “sign” that distinguishes your goods – or services – from those of others is a "trade mark".
Most trade marks are words (MICROSOFT), letter combinations (BBC), names (McDONALDS) or logos (Nike’s “Swoosh”) – but shapes (like the Coca-Cola bottle), sounds (Direct Line’s jingle) and even smells (not many famous ones here, but “the smell of fresh-cut grass” is a trade mark for tennis balls) can be a trade mark.
Why Are Trade Marks Important?
A trade mark provides the means by which your existing customers can find you or your goods again, and also a way for new customers to find you in the first place. No one can do business without a trade mark – indeed, it is no exaggeration to say that for many businesses the trade mark is probably the most valuable asset.
Are There Any Rights in a Trade Mark?
Yes. In some countries (the UK, for example), rights arise through use. Where a mark has been used to the extent that a reputation and goodwill attaches to that mark, it is possible to claim rights at common law.
Rights acquired only through use are, however, difficult to prove and are therefore difficult and expensive to enforce.
The best rights in a trade mark are acquired by registration. Most countries have a Trade Marks Office where trade marks can be registered, and there are various international arrangements whereby a single registration can cover a number of countries (a Community trade mark, for example, is a single registration covering all 25 countries of the European Union and an International Registration can cover up to about 60 countries).
A registration gives a statutory monopoly in a trade mark and enables the owner to stop others from using a mark that is the same or similar.
It is important to note that, in the UK at least, no rights are obtained as a result of registering a company name at Companies House.
How Is A Registration Obtained?
By filing an application at the appropriate Trade Marks Office. The application is then examined and so long as the requirements for registration are met (these vary from country to country), registration of the mark is granted.
Can any Trade Mark be Registered?
To qualify for registered protection, a trade mark must be distinctive. Descriptive words are difficult to register and there can be problems with surnames and place names. If your trade mark falls into the “difficult to register” category it is still worth obtaining advice as to whether registration might be possible. If, however, you are at the point of choosing a new trade mark, it might be best to find one that is distinctive and easy to register (and therefore easy to monopolise).
It is also important to choose a mark that does not conflict with prior rights of others. It is possible – and strongly advisable – to conduct searches to ensure that there are no prior registrations with which your new mark might conflict.
How Long Does a Trade Mark Registration Last?
Registered rights can last forever. In most countries a registration lasts for an initial period of 10 years but so long as renewal fees are paid at 10 year intervals the registration can be maintained indefinitely.
What Next?
Registration of trade marks, and clearance searching for new marks, can be complicated. It is important to get it right at the outset because any errors at this stage might be irreversible later on. This could mean that the rights that you think you have secured will be liable to attack or not wide enough to protect your mark.
We specialize in the registration and clearance of trade marks and we will be happy to help you to ensure that your trade marks are properly protected.
