IP Facts & Fiction

Myths about Trade Marks2018-12-12T14:02:45+00:00

Myths about Trade Marks

Fiction: Trade mark protection is a limited exclusive right.

Fiction

Trade mark protection is a limited exclusive right.

Facts

Registered trade mark protection gives exclusive rights to use a trade mark, as registered, for specified goods and/or services for an unlimited period.

Other than confidential information, trade marks are the only form of IP that have unlimited duration, subject to payment of registration and renewal fees to the UK IPO. Copyright, patents and designs all have finite lives.

Explanation

Once successfully registered and provided it is used properly, a trade mark registration can be maintained indefinitely on payment of regular renewal fees.

A registered trade mark affords exclusive use of that mark for the designated classes of goods or services. Someone else may simultaneously use the same trade mark in other classes of goods or services without infringing the first trade mark.

 

Fiction: Only words or graphic representations can be registered as trade marks.

Fiction

Only words or graphic representations can be registered as trade marks.

Facts

Apart from names and logos, colours, shapes, sounds or smells have also been registered as a trade mark.

Explanation

Any ‘sign’ which can represent a good or service in the course of trade and which can be represented on paper, is potentially registrable as a trade mark.

 

Fiction: Trade marks represented on a UK based website would not infringe trade marks in another country.

Fiction

Trade marks represented on a UK based website would not infringe trade marks in another country.

Facts

Trade marks used on web sites have been found to infringe trade mark rights overseas and vice versa.

Explanation

The internet is borderless and trade marks on a website, which can be viewed overseas, are potentially subject to the law of the place in which they are viewed.

Before advertising on the internet, it is prudent to search the existence of registered marks in target markets.

 

Fiction: An internet domain name registration will overcome a registered trade mark.

Fiction

An internet domain name registration will overcome a registered trade mark.

Facts

A domain name provides no ownership in a name – it is a means of internet navigation.

Explanation

Domain names and trade marks have different purposes. It is preferable to clear a name as available for trade mark registration before registering the domain name.

 

Fiction: Someone has a trade mark registration for a particular word so I cannot use that word as a trade mark for other classes of goods and services.

Fiction

Someone has a trade mark registration for a particular word so I cannot use that word as a trade mark for other classes of goods and services.

Facts

A trade mark registration is limited to the goods or services specified in the application.

Explanation

To minimise your risk of trade mark infringement, it is prudent to determine the scope of the third party trade mark registration before using the same word as your trade mark. You can do this quite easily by searching the UK IPO trade mark database.

 

Fiction: A trade mark cannot be protected if it is not registered.

Fiction

A trade mark cannot be protected if it is not registered.

Facts

Regular documented use of a trade mark is one of the simplest ways of protecting it, although registration as a trade mark under the Trade Marks Act 1994 is preferable, since the remedies for infringement are more cost effective and comprehensive.

Explanation

Goodwill accruing through use of a trade mark or trade name is protected by the common law cause of action called ‘passing off’. This prevents someone else copying or using a confusingly similar trade mark or trade name in similar circumstances. Passing off provides for equivalent remedies as are available under the Trade Marks Act 1994, although the remedies available under a claim for passing-off are slower, more expensive and invariably more unpredictable to obtain through the courts than those associated with a registered trade mark.

 

Fiction: Once you have registered a trade mark it does not matter whether you use it or not.

Fiction

Once you have registered a trade mark it does not matter whether you use it or not.

Facts

Use your registered trade mark or lose it!

Explanation

All trade marks, whether registered or unregistered, are at risk if they are not used. A registered trade mark may be revoked for non-use and be removed from the register if it is not used.

 

Fiction: Once a trade mark is registered it is quite safe to use that mark in any manner you like.

Fiction

Once a trade mark is registered it is quite safe to use that mark in any manner you like.

Facts

Use of a trade mark in the precise manner required by the Trade Marks Act 1994 is crucial. Improper use, or use otherwise than as a trade mark, may threaten the mark’s existence.

Explanation

Registered trade marks must be used in the course of trade by the owner in exactly the form in which they are registered and must not be used generically if the trade mark is to retain its distinctiveness for a particular good or service. If a trade mark is used generically over a period of time, it may be removed from the UK IPO’s Trade Mark register.

 

Fiction: A registered mark always takes precedence over an unregistered mark.

Fiction

A registered mark always takes precedence over an unregistered mark.

Facts

First come, first served is the key to protecting trade marks. A registered trade mark does not enjoy ‘indefeasibility of title’, i.e. ownership may be overturned by a court in the face of evidence of prior use by the challenger.

Explanation

The first to show significant use of a mark will own that mark even where there is a later registered mark. However, if possible, it is important to be the first to use and the first to register.