Trade marks - overview

A trade mark is intellectual property. It is a distinctive sign which distinguishes the goods or services of one business entity from those of others. When used in connection with services, it is sometimes called a service mark.

UK trade mark law is contained in the Trade Marks Act 1994.

Registered and unregistered marks

A trade mark may be registered or unregistered. Application for registration is made to the UK Intellectual Property Office (UKIPO). Registration gives the owner certain rights, including the right to prevent others using the mark in relation to goods or services identical or similar to the registered mark.

A mark cannot be registered if, broadly, it is too descriptive or is similar to various protected marks. Descriptive marks may, nonetheless, be registered if they have become distinctive.

Trade marks are registered in one or more of 45 different classes of goods and services, arranged by similar function. Once a trademark is registered, it will (unless successfully challenged) be held on the register for ten years, after which it must be renewed to preserve the owner's rights. The registration only applies to the UK.

Infringement

Infringement of a registered trade mark means use, in the course of trade, of an identical or similar mark in relation to identical or similar goods or services. A likelihood of public confusion may be required for similar marks. Using an identical mark in relation to dissimilar goods or services may constitute infringement if it is detrimental to the registered mark's distinctive character or reputation.

Enforcement of rights in registered marks is normally much easier. If the infringement is of an unregistered mark, or is not sufficiently similar to the specification of a registered mark, it may be actionable as the common law tort of passing off.

Whether infringement exists in a particular case depends on the similarity of the marks and the goods or services to which they apply.

Intention is not a requirement of infringement, although damages will normally be higher if the infringing party intended to deceive.

Sale and licensing of trade marks

Trade marks can be licensed or assigned. Owners licensing the provision of goods or services under their marks must exercise adequate quality control over the licensee's activities. Assignment of a trade mark without the associated product or service may lead to loss of rights in the trade mark.

Overlap with other IPRs

Trade marks may apply to protect products contemporaneously with other IPRs, eg design right, copyright and patents. Patents and copyrights are granted for single fixed terms and cannot be abandoned ie the owner does not need to take any particular action to maintain and enforce its rights. Trade marks remain valid as long as the owner uses them (and maintains any registration) but can be abandoned or revoked if the mark is not used.

Co-ownership

Trade marks may be co-owned. Ownership of registered marks is joint, unless otherwise agreed.

International registrationCommunity trade mark (CTM)

Registration of a trade mark with the Office for Harmonisation in the Internal Market (OHIM) is effective throughout the European Union. The national systems in the EU operate in parallel with the CTM.

The Madrid system

The system is administered by the World Intellectual Property Organisation (WIPO). It allows an owner to protect its mark in system member countries, by filing a single application with its national or regional trade mark office. A mark thus registered is equivalent to a registration in each country specified by the applicant (if a signatory to the Madrid system). This simplifies administration, and coverage may be extended at any time.