Trade Marks FAQ

The Very First UK Trade Mark 

Jane Lambert

12 Aug 2016 updated 14 Jan 2019

What is a Trade Mark?
A trade mark may consist of any signs, in particular, words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable of:
(a) distinguishing the goods or services of one undertaking from those of other undertakings; and
(b) being represented on the register in a manner which enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.
This definition, which is taken from s.1 (1) of the Trade Marks Act 1994.

How does that work?
The common law (that is to say, judge-made law) of England and Wales has for many years prevented traders from tricking consumers into doing business with them by using a name, mark or get-up that is the same or similar to that of an established trader by the action for passing off.  Since 1875 it has been possible to register distinctive signs and the goods (and more recently services) for which they are used with the with the Intellectual Property Office ("IPO") as registered trade marks. Registration of a sign as a registered trade mark confers the exclusive right to use the mark in the UK. The very first company to register a mark was Bass Brewery which is now part of Anheuser-Busch InBev SA/NV. The brewery registered the mark shown above for pale ale in class 35E under registration number 1 with effect from 1 Jan 1876 and it has been renewed ever since.  For the last 20 years it has also been possible to register a sign as an EU trade mark ("EUTM") with the European Union Intellectual Property Office ("EUIPO"at Alicante pursuant to the EU Trade Mark Regulation ("EUTMR") (Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ L154. 16.6.2017, p. 1)-99), Registration of a sign as an EU mark confers similar exclusive rights within the EU.

Exactly what Exclusive Rights are conferred by Registration?
Art 9 (2) of the EUTMR provides:

"Without prejudice to the rights of proprietors acquired before the filing date or the priority date of the EU trade mark, the proprietor of that EU trade mark shall be entitled to prevent all third parties not having his consent from using in the course of trade, in relation to goods or services, any sign where:
(a)  the sign is identical with the EU trade mark and is used in relation to goods or services which are identical with those for which the EU trade mark is registered;
(b)  the sign is identical with, or similar to, the EU trade mark and is used in relation to goods or services which are identical with, or similar to, the goods or services for which the EU trade mark is registered, if there exists a likelihood of confusion on the part of the public; the likelihood of confusion includes the likelihood of association between the sign and the trade mark;
(c) the sign is identical with, or similar to, the EU trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to or not similar to those for which the EU trade mark is registered, where the latter has a reputation in the Union and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the EU trade mark.

S.9 (1) of the Trade Marks Act 1994 confers similar rights on proprietors of registered trade marks in relation to their marks and goods within the UK.

What is meant by "Use" in this Context?
That is best explained by s.10 (4) of the Trade Marks Act 1994 provides:

"a person uses a sign if, in particular, he-
(a). affixes it to goods or the packaging thereof;
(b). offers or exposes goods for sale, puts them on the market or stocks them for those purposes under the sign, or offers or supplies services under the sign;
(c). imports or exports goods under the sign; or
(d). uses the sign on business papers or in advertising."

Art 9 (3) of the EUTMR does not define "use" in the same way but it makes clear that the same acts are prohibited under art 9 (2).

How do I register a Trade Mark?
The IPO has published a step by step guide to trade mark registration in the UK called Trade marks: protect your brand. It covers Register a Trade MarkWhat you can and can't register, Apply, After you apply and Unregistered Trade Marks.  I cannot really improve on that but I can offer two supplemental articles. In If the examiner says "no" - ex parte hearings in the Trade Marks Registry 10 Aug 2015 London IP and Tech Law I advised how to challenge an examiner's refusal to allow an application to proceed. In Oppositions in the IPO's Trade Marks Registry 14 Aug 2015 London IP and Tech Law I wrote about third-party challenges to a trade mark application.

There us similar if slightly more extensive guidance to EUTM registration on the EUIPO website called Route to Registration

How much does it cost to register a Mark?
You can register a UK mark yourself online for £170 plus £50 for each additional class of goods. However, it is usually better to use a trade mark attorney since he or she will carry out appropriate searches and settle an application that has is less likely to be challenged by examiners or third parties and he or she can deal more easily with any objections that may arise. The attorney will charge perhaps one or two hundred pounds extra for those services or perhaps even more but in most cases that is money well spent. In most cases, you should have quite a lot of change out of £1,000.

According to the Route to Registration, you can apply for the registration of a EUTM for €850. You will, of course, have to pay more for extra classes and you will have to add your attorney's fees which would be the same as for a British registration.

How are Trade Marks infringed?
By doing any of the acts that are reserved to the registered proprietor.   I set them out in Exactly what Exclusive Rights are conferred by Registration? There are very similar provisions in the first three subsections of s.10 of the Trade Marks Act 1994.

Very briefly art 9 (2) (a) and s.10 (1) covers what might be called counterfeiting. That is to say the use of exactly the same mark in respect of exactly the same goods.

Art 9 (2) (b) and s.10 (2) are more nuanced. The mark is infringed where because the same or similar mark is used in respect of the same or similar goods or services there is a likelihood of confusion on the part of the public including a likelihood of association with the registered mark. The Court of Justice of the European Union ("the CJEU") has set out extensive guidance on when such likelihood of confusion occurs to which IPO hearing officers refer in almost every opposition under s.5 (2) or invalidity application under s.47 (2).

Art 9 (2) (c) and s.10 (3) apply where a third party tries to take a free ride on or tarnishes a well-known trade mark by using it in relation to his own products whether they fall within the specification or not. A classic example was Pfizer Ltd v Eurofood Link (U.K.) Ltd. [2001] FSR 3 where the defendant called a blue coloured liquid Viagrene. Again, the CJEU has given extensive guidance on this provision.

What happens if your Mark is infringed?
You can sue for an injunction (an order of the court), damages (compensation) or an account of profits (computation and surrender of ill-gotten gains), delivery up or destruction of infringing products and a contribution towards your costs (your expenses incurred in bringing the defendant to court including counsel's and solicitors' fees).

If the infringement occurs in England and Wales you can bring the claim in Chancery Division of the High Court or in the Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester or Newcastle County Court hearing centres. If your claim is for less than £500,000 and can be disposed of in no more than two days you can issue proceedings out of the Intellectual Property Enterprise Court ("IPEC"), a specialist court within the Chancery Division where the judges and deputies are experienced in IP law, there is a streamlined procedure and recoverable costs are capped at £50,000. Claims under £10,000 can be brought in IPEC's small claims track where recoverable costs are very much lower.

For so long as we remain in the EU, the High Court and County Court are EU Trade Mark Courts which enables our judges to grant injunctions and make decisions on validity that take effect throughout the EU. By the same token, of course, the decisions of EU Trade Mark Courts in the other 27 member-states take effect here. That will change when we leave the EU.

How long does a Registration last?
A trade mark can be registered for 10 years and renewed indefinitely for so long as it remains valid. However, a trade mark can be revoked or declared invalid and claims for infringement are often met with counterclaims for declarations of invalidity or revocation.

On what Grounds can a Trade Mark be declared invalid?
A registration can be declared invalid if the Registrar (the Chief Executive Officer or Comptroller of the IPO when dealing with trade mark matters) or a judge decides that the trade mark should never have been registered either because it did not fulfil any of the requirements for registration at the time of the application unless the proprietor can show that the mark subsequently acquired those qualities through use or because the registration could have been opposed successfully on the grounds that there was an earlier trade mark registration or the use of the trade mark would have infringed some other IP right or amounted to passing off. Applications to the Registrar are usually determined on his or her behalf by officials known as hearing officers and generally follow the same procedure as in an opposition except that the burden of proof is on the applicant for invalidation.

There are provisions to similar effect in the EUTMR. Applications for invalidation are handled by a Cancellation Division.

What is Revocation?
Revocation is another procedure by which a mark may be removed from the register. The difference between invalidation and revocation is that a registration that is declared invalid is deemed never to have been made. A UK trade mark may be revoked in any of the following circumstances:

"(a) that within the period of five years following the date of completion of the registration procedure it has not been put to genuine use in the United Kingdom, by the proprietor or with his consent, in relation to the goods or services for which it is registered, and there are no proper reasons for non-use;
(b) that such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for non-use;
(c) that, in consequence of acts or inactivity of the proprietor, it has become the common name in the trade for a product or service for which it is registered;
(d) that in consequence of the use made of it by the proprietor or with his consent in relation to the goods or services for which it is registered, it is liable to mislead the public, particularly as to the nature, quality or geographical origin of those goods or services."

Art 51 (1) of the EUTMR makes similar provision for EUTM.

Can a Trade Mark be licensed or assigned?
It has always been possible to assign trade marks but there was no provision for licensing under the 1938 Trade Marks Act although persons other than a proprietor could become registered users. Trade marks may now be licensed just like any other IP right.

Where can I look up the Law?
The Trade Marks Act 1994 should be read in conjunction with the Trade Marks Directive (Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trade marks (OJ L 336, 23.12.2015, p. 1 - 26). Decisions of the CJEU and the General Court and most of the decisions of the national courts of the UK on the EUTR and the Directive can be found on the British and Irish Legal Information Institute website. The main practitioners' books are Kerly's Law of Trade Marks and Trade Names and Morcom, Roughton and St Quintin: The Modern Law of Trade Marks 

Where can I find further Information?
I give talks on this topic to business owners and managers from time to time. So too do the British Library Business and IP Centre and its associated libraries around the country.

If you want to discuss this article or have a question on trade mark law that is not answered here please get in touch with me through my contact form or call me on +44 (0)20 7404 5252 during normal office hours.

Popular posts from this blog

EPO accepts Cat as Inventor

The New IPEC Guide

China files more Patent, Trade Mark and Registered Design Applications than Anyone Else