Trade Marks FAQ
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| The Very First UK Trade Mark |
Jane Lambert
12 Aug 2016 updated 14 Jan 2019 and 13 March 2023
What is a Trade Mark?
In the UK and most other countries, it is possible to register a mark together with the goods or services in relation to which it is to be used with a national, regional or territorial trade marks registry. Registration confers the exclusive right to prevent others from using identical signs for identical goods or services or identical or similar signs for goods or services that are identical or similar to those for which the mark is registered where such use is likely to result in confusion.
However, even without registration, it is possible for a supplier whose mark is recognized in the market to prevent others from offering the same or similar goods or services under the same or similar mark by a judge-made rule that forbids traders from passing off their goods or services as those of another.
Should I register a Trade Mark?
Yes, you should for the following reasons.
First and foremost, registration protects your investment in branding. Your brand is the market's perception of your business. A favourable perception is achieved by sustained advertising, market research, supplying quality goods or giving good service and generally looking after your customers. Your trade mark is the sign by which your goods or services are recognized and the attractiveness of such mark has value.
Secondly and related to the first, a registered trade mark is an asset that can be sold, licensed, mortgaged or used in business format franchising.
Thirdly, it is very much cheaper and easier to bring a claim for infringement of a registered trade mark than an action for passing off. In the latter case, you have to prove that you already have goodwill or a reputation in relation to the relevant goods or services by reference to your mark. That is usually done by giving sales data, marketing expenditure and displaying samples of your advertising under the mark for the relevant period which can be costly and time-consuming if indeed it can be done at all. By contrast, you need only produce your registration certificate to prove your right to bring an action for infringement of such right.
Further, it is also easier to bring or defend proceedings under the Unified Domain-Name Dispute Resolution Policy, Nominet's Dispute Resolution Service or other domain name dispute resolution policies if you hold a registered trade mark than to rely on the law of passing off.
Where do I find the Law on Trade Marks?
The main statute is the Trade Marks Act 1994.
The Act was passed to implement Council Directive No. 89/104/EEC which has been superseded by 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 (Recast) (Text with EEA relevance). The Act has been amended to give effect to that Directive and there is a useful, unofficial consolidated version of the Act on HM government's website.
The Act is to be interpreted in accordance with the Directive as determined by the judgments of the Court of Justice of the European Union immediately before 31 Dec 2020. The courts of England and Wales, Scotland and Northern Ireland are permitted but are not bound to follow subsequent judgments of that Court after that date by the European Union (Withdrawal) Act 2018 and the Europen Union (Withdrawal Agreement) Act 2020.
The Act is supplemented by the Trade Marks Rules 2008 which have also been substantially amended. There is also an unofficial consolidation of the Rules on the government website.
Exactly what Exclusive Rights are conferred by Registration?
"(1) A person infringes a registered trade mark if he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered.
(2) A person infringes a registered trade mark if he uses in the course of trade a sign where because—
(a) the sign is identical with the trade mark and is used in relation to goods or services similar to those for which the trade mark is registered, or
(b) the sign is similar to the trade mark and is used in relation to goods or services identical with or similar to those for which the trade mark is registered,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.
(3)A person infringes a registered trade mark if he uses in the course of trade[F1, in relation to goods or services,a sign which—
(a) is identical with or similar to the trade mark,
where the trade mark has a reputation in the United Kingdom and the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.
(3A) Subsection (3) applies irrespective of whether the goods and services in relation to which the sign is used are identical with, similar to or not similar to those for which the trade mark is registered."
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."
How do I register a Trade Mark?
The IPO has published a step-by-step guide to trade mark registration in the UK called Register a Trade Mark. It includes an Overview which covers:
- What you can register
- What you cannot register,
- What it costs
- The Application Process
- Registering a Trade Mark Overseas.
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 is less likely to be challenged by examiners or third parties. 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. Usually, you should have quite a lot of change out of £1,000.
How are Trade Marks infringed?
Very briefly, 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.
S. 10 (2) is 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 has set out extensive guidance on when there is a likelihood of confusion. IPO hearing officers refer to that guidance in almost every opposition under s.5 (2) or invalidity application under s.47 (2).
S.10 (3) applies 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.
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 the 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.
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.
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."
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.
