Trade Marks

5 ways to spot a trade mark

Recognising when a sign is being used as a trade mark is crucial for avoiding any unintentional infringement of a trade mark.

Trade marks are everywhere around us; the brand name on the screen on which you are viewing this article, the manufacturer’s name on the cup of coffee you’re drinking whilst reading it, even the logo of the company who provided the electricity to switch on the monitors and the kettle. All of these are trade marks because they are signs (words, logos, colours, shapes, smells) used in the course of trade to distinguish the goods and services of one undertaking from those of another.

Recognising when a sign is being used as a trade mark is crucial for avoiding any unintentional infringement of a trade mark. Understanding what constitutes a trade mark may also help you to think about your own use of trade marks – perhaps your business has been using a slogan for years, but you’ve never considered that it may in fact be functioning as a trade mark, distinguishing your goods and services from those of other businesses in the eyes of your customers.

Here are five tips to help you spot a trade mark in the UK:

1. Look for the ® registered trade mark symbol

The ® symbol is ubiquitous in our everyday lives. It indicates that the trade mark is registered at the UK Intellectual Property Office, and it’s a criminal offence to use the symbol if the accompanying trade mark is not registered. If you’re a trade mark owner, using the ® symbol is an effective and easy way to warn third-parties against using your mark.

2. Look for the TM symbol

Whilst the ® symbol is used to indicate a registered trade mark, the ™ symbol can be used to inform the public that you are using a sign as a trade mark, even if it is not registered. It can be used alongside a word, logo or slogan. Beware that the use of the ™ symbol does not necessarily mean a mark is not registered – the marketing department may just prefer the way the ™ symbol looks!

3. Is the sign being used in the course of trade?

It’s entirely possible that there is no visible indication that a sign is being used as a trade mark. However, the manner in which it is used usually gives a sense of whether the party using the sign intends for it to be perceived as a trade mark. The essential feature of a trade mark is its ‘origin function’ – distinguishing goods and services of one undertaking from another. Therefore, if a sign is capable of indicating origin, it is probably being used as a trade mark and this IP right could be protectable at common law in the UK.

4. Is the mark on the UK trade mark register?

The UK Intellectual Property Office maintains a register of all registered UK trade marks. It can be searched online, here: Search for a trade mark – GOV.UK. If you’ve spotted a sign and want to check if it is a trade mark, you can search by a keyword, phrase or image to try and identify it on the register. If you saw the mark being used in relation to certain goods or services, you may also search for the appropriate Nice Classification to help narrow down your criteria.  You can also search the register by the name of the trade mark owner.

5. Seek the advice of a trade mark attorney

Very often, the legal difficulties in ascertaining whether a sign is being used as a trade mark can mean that it is useful to seek the advice of a professional representative. A Trade Mark Attorney will be able to advise on whether you have indeed spotted a trade mark, and what it may mean for you, your business and your own intention to use a similar or identical trade mark. Before applying to register a trade mark, it is advisable to seek the help of a Trade Mark Attorney in conducting a thorough trade mark search to identify even those marks which you haven’t spotted, but whose owners could still take issue if you attempted to use or register a similar mark.

If you would like professional advice on protecting your trade marks or dealing with a trade mark issue, please get in touch to speak to one of our trade mark attorneys.

Wilson Gunn