Trademark Law in the UK
Trademark rights are intellectual property rights which can prevent others from using a trade mark without the owner’s permission. In the UK, a trademark lasts for 10 years and can be renewed on a continuous basis.
A trade mark can distinguish the goods or services of one enterprise from those of another. As such, they must be unique. A trade mark can include words, logos, sounds, colours, or a combination of these. However, a trade mark cannot describe the goods or services to which it relates. In other words, it cannot be descriptive. Nor can it be misleading or offensive. Commonly used or indistinct trade marks cannot be registered either.
To register a trade mark in the UK, an application is made to the Intellectual Property Office. When applying to register a trade mark, a classification system must be used to specify the goods or services for which it will be used. Each class contains a list of terms and covers all goods and services in the class. A search should be conducted to check if similar trade marks are already registered in the same or similar classes of goods or services. There are 45 different classes. Goods in classes 1 to 34 and services in classes 35 to 45. All classes have a broad heading explaining what is covered in that particular class. This heading is only a general indication and does not include all the goods and services in that class.
The choice of class is important because a trade mark will only be protected for the classes of goods and services indicated in the application. Extra goods or services cannot be added after the application. Therefore, it is very important to plan ahead and consider which goods or services might be sold in the future. On one hand, including goods and services for which the trade mark will not be used can result in unnecessary fees. On the other hand, if a business expansion is planned for the near future, it could be important to consider additional classes in the application. If it is uncertain exactly which goods or services will be offered in the future, it will be important to review the current business plan, as well as future projections, when drafting the trade mark application. Another good idea is to consider whether another business is offering similar goods or services and compare the terms and classes selected. It should be noted that a registered trade mark can be revoked if it is not used within 5 years of registration, or for any uninterrupted period of 5 years, and there are no proper reasons for non-use.
The UK also recognises unregistered trademarks. Infringement of unregistered trade marks is known as “passing off”. Passing off involves three elements: Firstly, it is necessary to show that a trade mark has built up a certain reputation. This excludes a new trade mark with little reputation, or where no trade in the UK has taken place. Secondly, it is necessary to show that a misrepresentation has taken place. This requires that the trade mark complained of must be sufficiently similar to the trade mark of the claimant. Thirdly, there must be a likelihood of damage as a result of the deception. Proving infringement by passing off can be difficult, and it is therefore recommended that trade marks are registered at the earliest opportunity, in order to avoid any difficulty in protecting an unregistered trade mark.
If different variations of a trade mark exist, they might qualify as a series of trade marks. A series of trade marks can consist of up to 6 trade marks in a single application. For a series application to be successful the trade marks should 1) look the same, 2) sound the same, and 3) mean the same. All differences must be minor. Series applications only exists in the UK.
A few things should be said regarding the relationship between domain names and trade marks. A domain name is part of an internet address which locates a specific space on the internet. Domain names and trade marks can sometimes seem similar although they are entirely different things. An owner of a registered trade mark is not automatically entitled to use it as a domain name, and registering a domain name does not automatically give any rights over the corresponding trademark. Therefore, it may be a good idea to register domain names as trade marks; particularly as trade marks are often more valuable than domain names, and are more easily protected.
Trade mark rights are territorial and will only give protection in the countries where they are granted or registered. Trade marks can be registered in both the UK and abroad. If trading abroad, a registration should be made outside the UK. There are several ways to achieve this, including: 1) filing an application for protection in each country, 2) filing an application for a European trademark with the European Union Intellectual Property Office for protection throughout the European Union (no longer includes the UK), or 3) filing an international application via the Madrid Protocol for protection in up to 128 countries (at the time of writing). Both European and International protection offer many benefits including lower costs, less paperwork and an easy application. A UK trade mark application can be used to claim priority when applying for an international or EU trade mark, provided this happens within 6 months of the UK application. This means that a later application will be treated as if applied for on the same date as in the UK.
