10 things you should know about … trade marks

22 Feb 2012
Alasdair Taylor

Brands are critical to most businesses, and can be worth millions, even billions – think Microsoft or Coca-Cola. On the internet branding assumes especial importance, not least because brands can be incorporated into domain names. The value inhering in a brand is protected by trade mark law; and it is sensible for businesses operating on the web to have at least some familiarity with this area of law.

This article is primarily concerned with UK trade mark law.

There are two main kinds of trade marks: registered trade marks, which are protected by the law of registered trade marks, and unregistered trade marks, which are protected in the UK by the law of passing off. This article is concerned only with registered trade marks.

There are also two principal kinds of registered trade mark under UK law: UK trade marks and Community Trade Marks (CTMs). UK marks only cover the UK, while CTMs cover the whole of the EU. Much of the substantive law of trade marks has been harmonised across the EU, and many of the laws governing the two kinds of trade mark are therefore similar in the different Member States. In order to keep things simple, this article focuses upon UK marks rather than CTMs.

(1) What is a trade mark?

A trade mark is defined in the Trade Marks Directive* as “any sign capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods and services of one undertaking from those of other undertakings”.

The essential function of the trade mark is to guarantee the origin of goods and services; and the law of trade marks has been designed to promote that essential function. If you are unsure whether a sign is a trade mark, ask yourself whether it has this essential function.

Domain names used in the course of a business are, in one aspect, being used as trade marks.

One of the most important features of trade mark protection is that it relates to specific goods and/or services. Consequently, a single sign may be registered by different companies in respect of different goods and services.

(2) The art of search

Before you choose a trade mark for your business (e.g. choosing a domain name, or a name for a new product or service) it is usually sensible to conduct some kind of trade mark search to determine whether your proposed mark might infringe another’s rights. At the very least, you should search using the major search engines for examples of actual use, and search at the key trade mark registries. For instance, a UK business providing services in the EU and the US should search at the UK Intellectual Property Office (www.ipo.gov.uk), the Office for Harmonization in the Internal Market (www.oami.eu), and the US Patent and Trade Mark Office (www.uspto.gov). Searches should cover the actual proposed mark and any obvious variations (e.g. of spelling).

If the new mark will represent a significant investment, you should instruct a trade mark professional to conduct the search.

(3) Infringement

You may infringe a registered trade mark if you use in the course of trade a sign which is:

  • identical to a registered trade mark in relation to goods or services which are identical to those for which is it registered; or
  • identical or similar to a registered trade mark in relation to goods or services which are identical or similar to those for which it is registered where there exists a likelihood of confusion (which includes association) on the part of the public; or
  • identical or similar to a trade mark which has a reputation in the UK where the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

(4) The best defence

There are lots of arguments and tactics you can use to defend yourself against a claim of trade mark infringement.

If the trade mark has become generic (e.g. linoleum, aspirin, gramophone), or if the trade mark is over 5 years old and the owner of the registration hasn’t actually used the trade mark in the 5 years preceding the claim, you can seek to have the registration revoked. If the trade mark should never have been registered, for example because it conflicts with an earlier trade mark, or did not meet one of the other basic criteria for registration, you can seek to have the registration declared invalid.

The difference between revocation and invalidity is that the former affects the validity of the mark from the date that revocation is ordered, whereas the latter invalidates the mark ab initio, in effect re-writing the mark’s legal history.

(5) The threats trap

If you threaten someone with proceedings for infringing a registered trade mark, then you risk being on the wrong end of a legal action for “groundless threats” under the Trade Marks Act 1994. Certain kinds of threat can be made without creating this risk – namely, where the threatened proceedings relate only to acts of applying the trade mark to goods, importing the goods bearing the trade mark, and/or supplying services under the trade mark. You can also notify others that a trade mark application has been made or a mark registered without creating this risk.

This “threats” action is peculiar to UK trade mark law. Because of this unusual law, you should always seek professional advice before accusing someone of infringing your trade marks.

(6) Uses and abuses of (r) and ™

It is a criminal offence (punishable by a fine) falsely to represent that a trade mark is registered, or to make a false representation as to the goods or services for which the trade mark is registered. The use of the (r) symbol amounts to a representation that a mark is registered; however the use of the ™ symbol probably does not.

(7) Applying for a trade mark

You can instruct a trade mark attorney or solicitor to prepare and file your trade mark application, or if you prefer you may do it yourself.

Again, if the brand which will be protected by the mark represents a substantial investment, it is usually worth instructing a professional. Full details of the application procedure are posted on the website of the UK Intellectual Property Office (www.ipo.gov.uk) and, for CTMs, on the website of the Office for Harmonization in the Internal Market (www.oami.eu).

(8) Generic trade marks

Can you register a trade mark which is generic? The answer to this question is not simple.

The Trade Marks Directive does not use the word “generic”. Instead there are three categories of mark which are not registerable on broadly “generic” grounds. First, trade marks which are “devoid of any distinctive character” are not registerable. Second, trade marks which “consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or rendering of services, or other characteristics of the goods or services” are not registerable. Third, trade marks which “consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade” are not registerable.

However, if a trade mark has acquired a distinctive character as a result of its actual use, then these bars to registration can be ignored. BRITISH GAS is a good example of a trade mark which has acquired a distinctive meaning.

(9) Domain name game

The system of domain name dispute resolution, embodied in ICANN’s Uniform Dispute Resolution Policy and its offspring, is linked to the trade mark system. Trade mark rights can be used to secure domain names before they go on public sale (via “sunrise” periods) and to relieve domain name registrants of their domain names. The linkage is problematic, not least because there is a mismatch between the scope of trade mark rights and the uses of domain names. Trade marks are national rights whereas domain names (even country code domain names) are inherently international; moreover, trade mark rights are specific to certain goods and/or services, whereas domain names are not.

(10) Trade mark crimes

The offence of falsely representing that a trade mark is registered (see above) is not the only trade mark-related crime on the statute book. However, because of the way in which the trade mark crime provisions have been drafted (in particular, a reference to “material” being involved) it is arguable you cannot commit a crime under English law by including a trade mark on a website. On the other hand, it clearly could be a crime to sell counterfeit goods bearing others’ trade marks via your site.

This is a slightly updated version of an article originally published on www.website-law.co.uk in December 2006.

*The centrepiece of UK trade mark law is the Trade Marks Act 1994. However, the 1994 Act was introduced to give effect to an EU directive – the “First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks” (89/104/EC). English judges have generally preferred the wording of the Trade Marks Directive where it differs from the wording of the 1994 Act. For this reason, relevant quotations in this article are taken from the Directive rather than the Act.

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