Mark Your Rights
It is sometimes argued that, where a trade mark is being used, it is not necessary to go to the expense of registration because of the right of action against somebody using the trade mark or other characteristic of a business in such a way as to confuse the public. However, the common law remedy is both expensive and more difficult to enforce because of the requirements as to proof of confusion. Moreover, it does not provide a basis for protection outside the United Kingdom. On balance therefore it is always more appropriate to try and develop a registrable trade mark for any new product, service or business.
It must be emphasised, however, that the value of a trade mark, unlike patents, copyright or even confidential information, rests in its use in commerce. However ingenious and possibly attractive a name or symbol may be as a potential attention- getter, i.e. marketing tool, until it is actually used commercially it will have no particular value. For the innovator who has no intention of exploiting an invention but will only undertake licensing, there is probably little point in spending much time on trade mark protection. Nevertheless for the entrepreneur who is determined to start his or her own business, whether with a technological development or a very attractive product or service, the proper selection of a trade mark is extremely important.
Iain C. Baillie
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The first issue is of course - what is a trade mark? Originally trade marks tended to be either marks or symbols (logos/designs) which identified a product. Over the years the protectable "identifier" which can characterise a business has broadened immensely. The current UK Trade Mark Law of 1994 refers to signs. This can include almost any feature which can be represented "graphically" and this can apply even where the graphic description in fact merely describes the nature of the "sign", for example the blue colour of paraffin or the use of green on a petrol pump. One therefore can protect any word, whether invented or already in existence, a logo, design or symbol, a three-dimensional shape, a characteristic use of colour, a tune or other characteristic sound, and it has even been alleged that it would be possible (as it is in the United States) to register a characteristic smell.
However, to be registrable a mark must be distinctive and therefore it is generally difficult to protect simple combinations of letters, letter/numerical combinations, geographic names, particularly common geographic names, and common surnames unless distinctiveness has been acquired by long use. Most importantly it is not possible to protect a sign or mark which describes the product or service to which it is to be applied. This is particularly true of what might be described as real words. One is of course looking at the descriptive aspect in relation to intended use. In registering trade marks they are, in most countries, classified into 42 classes of subject matters of goods or services to which the mark can be applied, ranging from chemicals through household items, clothing and foodstuffs into financial services, teaching services etc. Even within these broad 42 classes one may be registering only for some of the goods in that class. For example, in class 9 which covers a wide range of electrical and similar items, one might register for records or sound recordings as compared to computer programs or in the clothing class one might register a particular type of clothing, for example outerwear, as compared to children's clothing.
A mark could therefore be descriptive in one area of goods and still be allowable in another. For example COAL would not be registrable for fuels but might be registrable in the clothing class. Particularly with words therefore, one may be seeking out a verbal construction which can be an existing word or a made up word which evokes the image of the article to which it is to be applied but does not describe it.
Such an evocative, non-descriptive word is a very strong mark. A purely invented word, such as Kodak or Bovril, is even stronger but because of its lack of evocative element may take longer to establish in the marketplace. Clearly characteristic designs, for example pictures of animals, for instance the Jaguar car, are also very powerful trade marks but have the possible disadvantage that the particular style of representation of the mark may change as taste changes. Since it is a truism of trade mark law that one must use the mark in the form as originally registered, the necessity of "redrawing" a design which appears in a style more suitable to 30 or 40 years ago may result in expensive programmes for re-registering the mark or running the risk that the revised mark is not considered as use of the mark as registered.
Therefore in considering the possibility of a mark for a new product or business one can either go to a professional wordsmith or sit down with a group of friends and toss the idea of the product or service or business around until one has achieved something which is both distinctive and characteristic but not descriptive. Always remember, however, that a mark which is too evocative of one narrow product line might be a hindrance at a later time if used as the name of the business which expands its various activities. Usually it is best to have several choices. One can then consult a trade mark professional as to the inherent registrability of the mark.
Assuming that there is now a selection of potentially protectable marks, the second important issue which arises is the possible conflict with existing marks. Very often registrations may exist which may not, on first sight, appear to the business person as being pertinent to the situation. Here the complexities of the International Classification System already mentioned can result in marks having similarities because they fall in the same class even though there is a diversity of business within that class. Equally there may be marks which have only been newly registered and which have not yet achieved a public renown.
In clearing a mark it is necessary to check the official Trade Mark Registry and, if the mark is to be used in other countries, use search services to verify the situation in other countries which may whittle down the number of potential marks. It is most unwise to use a mark which has characteristics which could lead to a confusion with an existing registration. Even if argument could be presented against the alleged similarity, there is always the danger that a product once launched on the market could meet with objection by the owner of the existing mark who may, because of its existing trading, be able to persuade a court that the use of the new mark should be restrained until the matter is settled. Since rarely can an owner wait for the settlement of a law suit, this may effectively mean that the new mark is dead. Clearly this could be embarrassing if considerable expense has been incurred in launching the new business or product.
This necessity of clearance, which is sometimes overlooked by creators of new marks, is one of the most important reasons for consulting a professional in the field before starting to use a mark. Whether or not it is intended to protect the mark by registration, one MUST always clear the freedom to use a mark. It is extremely important also that no reliance at all be placed on such "clearances" as checking that the name has not been registered as a company name. The Company Registry has nothing to do with the freedom to use a name in business but is merely a means of identifying a particular company for the purpose of checking the status of that company and its ownership. Registering a company name gives absolutely no rights to use the name, nor indeed until the company has been trading for some time will it prevent others from using the name. For that reason it is always necessary to consult a trade mark professional. Because there is the possibility of rights stemming from common law use, it is also wise in clearing a trade mark or new identifier to explore the possibilities of names etc., which are in use but which have not yet been registered. To some extent this will depend on the potential user's commercial knowledge of the field but searches can be done in directories etc., which can assist in assessing the risks involved.
As mentioned above, it is desirable that the name be registered so that one can have exclusivity in the name as soon as possible. Use of a name in one particular locality will not necessarily give protection in any other part of Britain so that those who have learned of the name in that other part may be able to set up competing businesses which could be an embarrassment as the original business expands through the country. The same considerations are also true once there is the possibility of international trading. Unfortunately under the current position, for example, even in Europe, protection by trade mark registration in, say, Britain gives no protection in Ireland or Spain. There will be a new single registration for the whole of the European Community but this will be expensive and only justified where there is likely to be trading in three or more countries and also has a great deal of uncertainty as to how the system will work. Moreover, the securing of such a registration does not overcome the problem of verifying that the mark is in fact free for use in each of the European countries. Should, in any one country of the European Union, there be rights which antedate those of the new owner of the mark then this might prevent the Community Registration coming into existence.
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Trade mark protection, providing one only wishes a single class of the International Classification System, is relatively inexpensive. In the UK it usually costs less than £400 to initiate the application in the Registry (which is a combination of official fees and the representative's charges). One also should be aware of the trap of applying for protection for too narrow a range of goods or services. One is seeking not only protection for existing business activity but also future activities for which the mark may be used and also the question of possible use by others which would be embarrassing or annoying even if one does not wish to enter into their particular production. Assuming the mark receives no major objection against it, by way of descriptiveness or conflict, there will be a relatively small additional amount of cost for correspondence with the Registry and final completion of the registration. Protection on an international scale is, however, much more difficult, complex and expensive and should be only undertaken once there is a realistic likelihood that the mark will be needed in other countries for trading. Of course, it must be admitted that the longer there is the delay, then the risk exists, as mentioned above, that the rights in another country will be pre-empted by somebody who has innocently chosen the mark or deliberately become aware of the mark and decided to protect it in its own country.
Once you have secured a registration, it is wise to remember that it must be used properly. A trade mark is an "adjective" and must always be used with the generic name of the product, for example a Hoover vacuum cleaner, not a Hoover. Preferably it should be marked as being registered although such marking should only be effected after full registration has been completed since it is a criminal offence to mark as a registered trade mark something which is not. Markings such as merely are a symbol that the marker would like to claim rights in the mark and have no legal effect. Preferably the marking is "Registered Trade Mark" but ® can be used. Preferably the word should be used in distinctive type so that it stands out from the rest of the text in which it appears and whether a word or a design, but particularly for designs, it must always be used exactly in the form as registered. One must carefully monitor sales persons, brochure writers, advertising agents etc., as to the manner in which they use your trade mark. Lay down rules which they must follow. If you find there is misuse of your trade mark then you can take action if the other party is using the same mark on the same goods for which registration has been secured. If the mark has acquired a certain reputation, one can sue against use of a similar mark or use on similar goods/services from those originally registered, i.e. as the reputation of the mark increases one has a remedy somewhat similar to the passing off concept but more easy to enforce because of the registration. In fact it is one of the advantages of a registered trade mark that, very often, when one finds misuse by others, a simple letter drawing attention to the registration will be sufficient to prevent encroachment upon the mark whereas in passing off situations an argument may be developed as to whether or not there is in fact confusion of the public.
Once registered the mark will have to be renewed every 10 years and it is important that the legal advisor responsible for protecting the mark for you be fully aware of your current address. It is very easy for a small company to forget to advise their trade mark agent of a change of address where there are perhaps only one or two trade marks involved and no regular correspondence. Every year many marks are allowed to lapse because the trade mark agent can no longer contact the original client because of changes in address and the client is not aware of the necessity of renewal.
As already suggested, a solicitor may or may not have such expertise and it is therefore important, if a solicitor is retained, that you verify that they do have significant understanding of the field before passing this question to them. Particularly in respect of advising on trade marks there is a great deal of professional skill in assessing the trade mark which is not easily learned merely from the legal textbooks.
1. If you are going to develop a new product, service or business it is useful to create a name which is commercially attractive and also legally distinctive so that you can exclude others from using it.
2. The best way of choosing the strongest name is to develop a few possibilities and then consult a professional advisor in this field who will advise on the distinctiveness of the name and its freedom for use, taking into account the rights of others by way of registration or possibly by way of use.
3. Once chosen it is always wise to consider the mark or logo, design etc., as a trade mark even if it is proposed to use it as a company name. Never depend solely on company name registration either for safety, use, or as protection against others.
4. Monitor the use of the mark carefully to avoid weakening the valuable legal entity which is created by registration. This is particularly true if the mark is licensed for use by others.
5. Consider international protection if international trade is contemplated but appreciate that there has to be a balance between the need for protection and the cost of protection, particularly where use may be deferred for some time.
Editors Note: Since this article was first published there have been some changes to international trademark legislation. Always check with your intellectual property professional.