Trade mark registration: essential points to remember
By: Shireen Smith | Posted: 28th September 2010
In 1994 the law changed and there is no longer any protection for an unregistered trade mark under the Trade Marks Act. So, if you want to stop someone using your unregistered brands, you can only do so through a different type of legal action called ‘passing off’. This action arises out of the common law, and is more difficult to establish. It involves proving damage to your reputation, and confusion by members of the public, among other things.
Choose a distinctive name
Choose a distinctive name that is capable of registration as a trade mark. This will avoid any problems arising if your name is disputed after you have registered and, also, is more likely to get registered as no one else will have that distinctive name. The risk that someone else registers ’your’ name first is especially strong if you have chosen a desirable name. The first to file a trade mark generally ends up with superior rights to a name unless the application is successfully opposed before it gets onto the register. Although it is not necessary to register a trade mark to use a name, there is a tangible danger in not doing so; namely that someone else might register the same name first, or might unwittingly be building up rights in ‘your’ trading name.
Avoid descriptive words
Descriptive words are those that your competitors may legitimately want to use to describe their products and services. For example, an IP lawyer, will naturally want to be able to say that they are an IP lawyer. If others were allowed to trade mark the words ‘IP lawyer’, then because of the wide scope of protection that trade marks give, other IP lawyers would be precluded from saying that they were IP lawyers. That is why it is not possible to trade mark purely descriptive words in your industry.
Research before you commit
More extensive searches are necessary to find out whether there are any registrations for similar marks on the trade mark registers that are being used for similar goods and services to yours. If there are, then your chosen name is not available for you to use, and knowing this will save you wasting money on company formations and domains. So, it makes sense to always check the trade mark registers first.
As there are a great number of registered marks, it may be difficult to find names that are available. If your business name infringes someone else’s trade mark, you will have to find a new name for your business, despite having built up a reputation in the original name. So, avoid committing to a business name if someone else has a trade mark to use it in a competing or an overlapping business area.
Domain and Company names do not give you exclusive rights
A name that is available to register as a company, or domain, is available for just that purpose - registration. To use it, you will have to find out whether someone else is already using it in a similar business to the one you intend to establish under the name. This is a common trap new businesses fall into – thinking that just because the name is available that is the end of the matter; the Companies House FAQ clearly states ‘You should ensure that your company name does not conflict with a trade mark’.
Websites are key to businesses these days, and when registering domains, whoever you register with is likely to have a term warning you that your rights to the name may be cancelled or transferred to another party should they object to its registration or use, and it be found that they have a legal right to its ownership. That is why it is unwise to assume you will be all right just because your chosen name is available to register.
Just because someone appears not to have the same or similar name registered with Companies House, or registered as a domain name, does not mean the name is free for use or is essentially problem free. You need to also check the availability of the name in the trade mark registers. You must realize that your searching should not stop at company and domain names.
Trade mark clearance search
The trade mark registers are increasingly cluttered, so it is difficult to find available names. Having a trade mark clearance search before you commit to a new name or design will protect your business from the catastrophe of infringing on someone else’s trade mark, and finding that you have to scrap all your marketing materials, and hard work, and start again with a new name. This is one preventative step nobody should overlook. The cost of a clearance search is small whereas the cost of having to change a name once a business or product has already been launched is very high. Better to find out for yourself and take steps, in your own timescale, to correct a problem than to wait until someone is forcing you to change your name under time pressures when you may have other, more important, priorities.
Trade mark searches are complex and specialized, so you need a professional who is knowledgeable about trade mark law to do a search. A trade mark search will look at similar sounding names, and words having a strong element in common (such as ‘Mc’ or ‘Easy’ if you were searching for names using these elements of the famous marks – McDonalds and Easyjet). So, only a professional trade mark search gives you the true picture about others’ rights to a name.
Where do you want to register you mark?
Trade mark registration gives you rights over a trade mark in a certain territory - generally in the sector in which you do business and register a trade mark. It is also appropriate to register your mark for the business activities you intend to be engaged in within the next 5 years, and it depends on which ‘class’ your activities fall into it as to which classifications are relevant to you.
Once you have had a search and decided to proceed with an application, the next question is where do you want to register your mark? If you want protection in the UK, then a UK trade mark application is relevant. If on the other hand you think you will be doing business in the EU, or some countries within the EU, then it would be a good idea to register a CTM mark. You would enjoy trade mark protection in all 27 countries within the EU once the application is granted. However, what is important to understand is that if the application is successfully opposed by someone who has a registered trade mark in any one of those 27 countries, then the application as a whole fails. You could then convert the application into individual country filings, and these are then deemed to have been filed on the same date as you originally filed your CTM. But this is going to be costly. The pre filing search we do is of the CTM registers not of the individual registers of each of the 27 countries. If you wanted to reduce the risk of a failed application, then we suggest also searching the individual country trade mark registers of key countries within the EU, such as Germany. However, this does add to the overall costs.
Benefits of Registration
Very often businesses do not really appreciate the value of their business name until faced with imitators. Registering a trade mark is a powerful way of protecting your brand identity and should be one of your top priorities. A proactive strategy for protecting your brand will invariably save business funds in the long run.
The advantages of registration include a reduced risk of using someone else’s trade mark name, or of others successfully using the same name as you. If they do, you are in a much stronger position to enforce your rights and prevent them from using your brand identity if you have a registered mark.
Investing in a trade mark is rather like investing in land. Trade marks give you exclusive rights to your brand identity, and are important tools for capturing the value of your goodwill. They are also the way to ensure you have the right to use your chosen name, and that it is not already someone else's trade mark. This is the case even if you have managed to register the company or domain name.
Shireen Smith is an intellectual property solicitor and technology lawyer at Azrights Intellectual Property Solicitors, London providing advice on how to register trademarks, and International trademark registration, patents and domains and domain disputes.This article is copyright
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Tags: scope, registrations, confusion, risk, reputation, common law, lawyer, descriptive words