10 Things all businesses should know about Registered Trade Marks
A trade mark is defined as any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or packaging see s.1(1) Trade Marks Act 1994. Trade marks have been used for different reasons in different parts of the world for thousands of years. Pottery makers in ancient China used marks as symbols of pride in their workmanship. Egyptian and Roman masons marked their bricks for purposes of accountability should the building collapse. In 1266 a law was passed in England requiring bakers to mark their bread so that “if any bread be faultie in weight, it may be then knowne in whom the fault is”.
A trade mark does not have to be registered, the common law provides certain rights to the owner of an unregistered trade mark. However, it is easier to enforce your rights if the trade mark has been registered.
To be registerable, a trade mark must be distinctive of the goods or services for which it is being registered and not the same or similar to any earlier trade marks on the register for the same or similar goods or services.
Identical marks can be registered by two or more separate persons as long as the goods and/or services are sufficiently different e.g. the word POLO for cars, for shirts and for mints.
Under the Nice Classification, there are 45 different classes of goods and services, and when filing an application for registration, the applicant must choose in which class or classes he wishes to seek protection.
UK businesses can either seek to register a trade mark in the UK alone, through the UK Trade Mark Registry or alternatively seek to register a trade mark in each of the member states of the EU through the Office of Harmonisation for the Internal Market – or both.
The ownership of a registered trade mark gives the owner the right to use the mark on the goods and/or services in the classes for which it has been registered and permits the owner to take legal action against any third party that uses the same or similar mark on the same or similar goods and/or services as those set out in the registration.
Unlike other intellectual property rights, a registered trade mark has an infinite life time, subject to the payment of a renewal fee every ten years. UK Trade Mark No. 1 was registered on 1 January 1876 and is still registered today.
Like other intellectual property rights, a trade mark is a form of property and can be sold, licensed or used to secure a mortgage or loan. A trade mark can become a very valuable asset and should be protected and made to work for the owner e.g. used as part of a franchise package.
The symbol ® should only ever be used in relation to a trade mark that has been registered. It is a criminal offence to use this mark when the mark involved is not registered (see s.95 Trade Marks Act 1994. Such an offence is punishable with a fine of up to £1000 (at January 2010).