Introduction to Trademarks


31 Mar
31Mar

Contents

What is a trademark?; What constitutes a trademark?; What is not a trademark?; Registering a trademark; Trademark protection in the UK—post-Brexit; Choosing a mark; Selecting goods and services; Clearance searches; Application and registration process; Filing 

What is a trademark?

A trademark is a sign used to distinguish the goods and services of one undertaking from those of another. In other words, a trademark enables consumers to identify goods or services as originating from a particular company or relating to a certain product or service.

What constitutes a trademark?

Typically trademarks take the form of words or logos though it is possible to protect more unusual forms of trademarks such as colours, slogans, shapes of products or packaging, sounds, motions and even smells.

Trademarks may be registered or unregistered. Registering trademarks usually offers the best protection (see below) but unregistered trademarks can be enforced in certain circumstances under the law of passing off.

What is not a trademark?

It is important to distinguish trademarks from other types of registration, such as company names or domain names.

Registering a company name at Companies House does not provide trademark protection for that name.

If a person registering a company name wishes to prevent third parties from using an identical or confusingly similar name in the course of trade, it is important to file a separate trademark registration to better protect the name.

Likewise, a domain name registration alone will not enable the registrant to prevent others using the name in another context, in the absence of registered or possibly unregistered trademark rights. It is advisable to underpin a domain name registration with a trademark registration to maximise protection and scope for enforcement.

Registering a trademark

The owner of a registered trademark has, generally speaking, an exclusive right to prevent others using the mark without their consent.

Enforcing a registered right is generally more straightforward and less costly than enforcing unregistered rights (see section below on passing off).

It is therefore advisable to register as many aspects of a brand as possible—at least the name and/or logo.

The increasing use of the internet and social media for marketing and publicity purposes means that businesses are becoming ever more inventive with their branding strategies and are filing trademark applications for things like twitter hashtags and memes associated with their products.

It is best practice to engage a trademark attorney who can advise on all aspects of trademark registration, conduct clearance searches, draft a bespoke application and deal with any objections from either the registry or a third party.

Trademark rights are territorial in nature which means they take effect only in the jurisdictions in which they are registered. Accordingly, brand owners have to think carefully about the territories in which they require protection—this may be in jurisdictions where goods are manufactured as well as where the goods are marketed and sold.

Trademark protection in the UK—post-Brexit

In summary, the trademark position from the end of the implementation period is as follows:

the UK is no longer subject to the EU Trade Mark Regulation, and EUTMs are no longer protected in the UK

the holder of an EUTM automatically becomes the holder of a comparable trademark registration in the UK as at IP completion day. The number allocated to the comparable mark is the last eight digits of the EUTM registration number prefixed with UK009 (or, in the case of international registrations designating the EU, the last eight digits of the registration, prefixed with UK008)

it is possible to opt out of the scheme, but there is little need to do so proactively, as the comparable marks automatically expire if renewal fees are not paid when they become due

there is no fee for the automatic creation of comparable marks on the register, but other fees may be payable at a later stage—e.g. renewal fees

there is no effect on priority or seniority in the UK—the comparable UK rights created enjoy the same priority and/or seniority that was enjoyed by the Community rights from which they are derived

where the registered trademark is a comparable trademark derived from an EUTM that was in force at the time the UK left the EU, for that proportion of the five-year period that falls before the UK’s departure, genuine use will be assessed by reference to use in the EU (including the UK) of the corresponding EUTM

where the reputation of a comparable trademark falls to be considered in respect of any time before the UK’s departure from the EU, the relevant reputation will be that of the corresponding EUTM in the EU (including the UK)

pending proceedings can continue in the UK courts and the court has jurisdiction to provide remedies in so far as they affect the UK. However, the UK courts cease to be Community courts and are not able to grant EU-wide remedies

right holders should ensure that any pending EUTM applications are prosecuted as efficiently as possible, with the aim of obtaining registration by IP completion day, so as to take advantage of the automatic conversion mechanism on that day

the professional representative on the record is required to be authorised to practice in, and be domiciled, in an EU-27 or EEA country

the common law protection available to unregistered trademark rights in the UK is not affected, but it is not possible to rely on them as the basis to challenge EUTM applications and registrations pursuant to Article 8(4) of the EU Trade Mark Regulation

Choosing a mark

In order to be registered as a trademark, the sign must be 'capable of being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor’ and able to distinguish the goods and services of one undertaking from those of another.

  • the trademark must be distinctive—the more distinctive a mark, the easier it is to register and protect. Strong trademarks are often made-up words such as Microsoft or Adobe
  • the trademark must not be descriptive e.g. it must not describe characteristics of the goods or services relating to the mark. On that basis, the marks APPLE or ORANGE would not be acceptable in relation to food products but are registrable in relation to unrelated goods and services such as computer hardware, IT services and telecommunications
  • the trademark must not be something that has become customary in the established practices of the trade in question (e.g. the use of the name VASELINE for petroleum jelly)
  • the trademark must not exclusively comprise the shape or other characteristic: which results from the nature of the goods themselves; which is necessary to obtain a technical result; or gives substantial value to the goods. For example, a standard mineral water bottle would not be registrable as a mark
  • the trademark must not be deceptive or offensive, contrary to public policy, illegal or inclusive a protected emblem, or contrary to laws protecting designations of origin, geographical indications, the protection of terms for wine or traditional specialities, or the protection of plant variety rights

Selecting goods and services

Trademark registrations correspond to a selection of goods and services that reflect how the mark is used or will be used in the future.

In some cases, identical trademarks coexist on the register without any risk of confusion because the goods and services covered by the respective trademark registrations do not overlap and are considered sufficiently distinct.

Applicants select goods and services with reference to the Nice Classification. There are 45 classes: classes 1–34 cover goods and classes 35–45 cover services. It is best practice to engage a trademark attorney to draft a bespoke list of goods and/or services (otherwise known as a trademark specification) to be included in the trademark application.

A specification that is too broad or vague runs the risk of being challenged by the trademark examiner, and the scope for opposition increases. Conversely, a trademark specification that is too narrow might not provide sufficient protection for future developments eg a diversification of goods and services provided under the mark.

Clearance searches

Prior to using or applying for a new trademark, it is advisable to engage a trademark attorney to conduct a clearance search to identify any identical or confusingly similar trademarks already in existence which are likely to create obstacles to trademark use or registration. A basic clearance search covers trademark registry databases (in the selected jurisdictions). In some cases, a more comprehensive clearance search may be appropriate, which would include company name databases, domain names and unregistered marks in use on the internet.

Application and registration process

Each application must include: name and address of the applicant, a representation of the mark, and a list of the goods and services to be covered by the trademark along with the official filing fee:

  • UK trademark registrations are registered at the UK Intellectual Property Office (IPO) under the provisions of TMA 1994. Applicants may use a paper application form (TM3) or apply online (e-TM3).
  • EUTMs which take effect in each Member State of the EU and are registered at the EU Intellectual Property Office (EUIPO) under the provisions of Regulation (EU) 2017/1001. Applicants may file a paper application or apply online. For more information, see Practice Note: EU trademarks (EUTMs)
  • International trademark registration designating the UK, registered under the provisions of the Madrid Agreement concerning the international registration of marks or Madrid Protocol via the World Intellectual Property Office.
  • Comparable trademarks (EU) and comparable trademarks (IR) are created automatically, based on existing EUTMs or international trademark registrations designating the EU. Accordingly, separate applications are not required

Filing

If the trademark application meets the basic requirements of the trademark registry and does not fall foul of the 'absolute grounds' listed above, it will proceed to publication.

If the mark goes unchallenged, it will proceed to registration. Alternatively, a third party may file an opposition based on earlier trademark rights that conflict with the mark applied for, i.e. the marks are too similar or are identical or, more unusually, there is a conflicting passing off right, copyright or design right. For UK trademarks and EUTMs, a party has two months from the date of publication of the application to file an opposition or observations, or to file a notice of threatened opposition which will extend the opposition period by 1 month.


By the publications team at: Contracts-Direct.com with the assistance of the referenced third parties (Lexis Nexis).

Legal Notice:

Publisher: Atkins-Shield Ltd: Company No. 11638521
Registered Office: 71-75, Shelton Street, Covent Garden, London, WC2H 9JQ

Note: This publication does not necessarily deal with every important topic nor cover every aspect of the topics with which it deals. It is not designed to provide legal or other advice. The information contained in this document is intended to be for informational purposes and general interest only.

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Atkins-Shield Ltd © 2021

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