Trade Marks

Key point: Typically, a 10 year (although renewable every 10 years ad infinitum) absolute monopoly in a sign such as a brand name which is indicative of the origin of goods.  Please note the term of monopoly varies from country to country.

Traditionally, trade marks have been any word or logo which serves to designate the origin of goods or services. In recent years the law has come to recognise that many other things can also serve this purpose, and are therefore capable of operating as trade marks. It is now possible to register such diverse things as advertising jingles, smells and the shape of goods or packaging as trade marks.

To be registrable a trade mark must be capable of distinguishing the goods or services of one party from those of other parties. Furthermore, trade marks which consist of anything other than words or logos must be capable of being represented graphically. It is not possible to register as a trade mark any sign which does not satisfy these requirements, signs which are inherently non-distinctive or descriptive or which consist of words or other things which traders in the same area of business may wish legitimately to use to identify the origin of their goods. For example surnames and geographical locations may be excluded from registrability on this basis.

In some countries, including the United Kingdom, rights can be obtained in a trade mark simply by using the trade mark on a sufficiently extensive basis to acquire a reputation in the trade mark identifiable with the user. In these circumstances, the user can take action against another party who is attempting to misrepresent themselves as the user by using a similar trade mark through an action for passing off or under unfair competition law.

However, most countries provide a statutory registration procedure for registration of trade marks and it is in all circumstances advisable to register a trade mark, where possible, since infringement of a registered trade mark is a strict liability offence and is not dependent upon proving a reputation or any misrepresentation. Furthermore, in certain circumstances, infringement of a registered trade mark can be a criminal offence and punished accordingly.

A registered trade mark is obtained by filing an application with the appropriate authority, which is then searched and examined. Once any objections raised are overcome, the mark is advertised in order to allow any interested party to object to registration should they have grounds to do so. Subject to no objection being raised, the mark is then entered onto the Register of Trade Marks. Once registered, a trade mark can usually be kept in force for as long as is required, subject only to the payment of renewal fees. Renewal fees are not usually payable annually but last a number of years, and for example in the United Kingdom are payable every 10 years.

As with patents, trade marks are essentially territorial. However, unlike patents, it is possible to obtain a single registration which covers more than one country. For example, it is possible to obtain a Community Trade Mark Registration which is effective throughout the whole European Union. It is also possible to obtain an international registration which is effective in as many of the countries which are a party to the Madrid Agreement and/or Madrid Protocol as are required. However, it remains the case that protection in some countries can only be obtained by a national registration in that country.

To find out more about trade marks, please click here to request a copy of our Trade Marks leaflet.


© 2019 Wilson Gunn