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Saturday, 31 July 2010

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Trade Mark Basics

What is a trade mark?

A trade mark is a sign which may distinguish one trader's goods and/or services from another's.

A trade mark which has been used and has some goodwill attached to it, can be protected in some countries under the common law of passing off. Normally, to breach these common law rights, a competitor confuses a buyer into thinking that the goods/services on sale have some connection with the real owner of the trade mark who will be damaged by the competitor. However, even in cases in which it is actually possible to do it and it often won't be, it can be a prohibitively expensive business to prove in evidence the ownership, age and extent of goodwill and the likelihood of confusion and damage that are required to action common law rights successfully. Common law rights may also apply only to a local area. Registering a trade mark for the whole of a jurisdiction like the UK or the EU can make it significantly easier to stop other people from using or registering conflicting marks themselves.

Someone who considers that a mark belongs to him will often use the "TM" symbol after the mark to try to claim it is his and warn other people that it is considered proprietary. Someone who has a mark registered is allowed to use the ® symbol, which means "registered trade mark", again as a warning of the proprietary nature of the mark. The scope of a trade mark registration is defined by a representation of the mark and a list of goods and services in respect of which it is registered. Except in cases when unfair advantage is being taken or detrimental use made in relation to a registered mark which has a fairly strong reputation, the registration will tend to protect the mark only in respect of the same or similar goods or services to those for which it is registered and this is why the same or similar marks can co-exist with no conflict between people in different fields (e.g. Morgan (cars) and J P Morgan (bankers)).

Examples of types of mark that can be registered

Typically, registered trade marks are words (e.g. Coca Cola), devices (e.g. the Nike flash, the NatWest logo, or the Bass triangle) or stylised word marks (e.g. the particular way of using Coca Cola on the side of a Coke can or the particular way of using the RR logo on the radiator grille of a Rolls Royce motor car). However, in theory, anything which can be "graphically represented" might be registered. Shapes (e.g. the Chanel 5 bottle, and Coca Cola bottle), sounds (e.g. the "Intel sound" or the "Hamlet music"), and colours (e.g. a particular colour of green in respect of BP petrol stations) may now be registered.

What are the requirements for you to obtain a trade mark registration?

In respect of each of your marks, you should show us how the mark is to be used and provide a list of all types of goods AND services on which the mark is intended to be used in future. In practice, it can often help to think about precisely what customers will be receiving or paying for in order to formulate a complete list of goods and services to be protected; for example, will customers only be provided with goods, or will they also be provided with services, which are often harder to identify? Examples of services are business, publicity, financial, telecommunication, storage, design, education, training, maintenance, repair, medical, research and even trade mark attorney services.

A new trade mark cannot normally be registered validly if someone else already has a similar conflicting mark but, in the UK and some other countries, the trade mark can be registered with the consent of the owner of the earlier trade mark.

A trade mark cannot normally be registered if it is too descriptive or non-distinctive. For example "BEER" could never be registered for beer. Likewise "London" or "Super" would in most fields normally be very difficult to register, because many people would naturally want to use them. Sometimes the applicant will be able to prove that he has used a trade mark so much that it has nevertheless become distinctive of him, so that his mark can be registered.

Procedure

Trade Mark applications in the UK normally take about 6 to 9 months to become registered. Community Trade Mark (CTM) applications, which cover the whole of the European Union including the UK, currently take about 12 to 24 months. During their examination, searches are made by government searcher to locate any prior applications/registrations in conflict. The UK office may object on the basis of such marks. The CTM office will not. However, in either case, the distinctiveness of the mark will be examined, and third parties will have an opportunity to oppose later, even if the mark is accepted by the government examiner. Oppositions by third parties can become rather entrenched especially on CTM applications. However, so long as a CTM application does not run into objections of this nature, even though it is somewhat more expensive than a UK application, it is a very cost-effective way to obtain registration rights covering the whole European Union.

A high proportion of the countries of the world have trade mark registration systems. It is now procedurally possible, once a home application (e.g. a UK or CTM application) has been filed, to file one International trade mark application to protect quite a wide spread of countries, including potentially important markets such as the EU, Japan, USA and Australia.

Other Features of Trade Marks

Don't think that the decision on whether to register a mark is the same as whether to use it. A search through prior marks conducted by a trade mark attorney is always recommended in order to assess freedom to use a new mark. Otherwise, a third party could come along and stop you, unexpectedly, later on, by claiming that you are infringing their common law or registration rights.

A trade mark registration has a number and is published, therefore being easy to prove as a right against third parties and serving as a warning against third parties making searches when choosing new marks. A registration can last for ever, and should significantly help prevent the potentially damaging situation of someone trying to use or register a similar trade mark in conflict with yours. Registered trade marks are also of particular importance in the battle against counterfeiting, including counterfeit (or blatantly copied) products and parts; this is because some copied parts are so "good" that they may have a registered trade mark, perhaps formed by a mould, copied in the process. The Trade Marks Act has very robust criminal provisions indeed (the maximum punishment in the UK for some forms of knowingly infringing a trade mark is 10 years' imprisonment) in respect of counterfeiting.

An important decision often to be made is whether to file a national UK trade mark or a Community Trade Mark (CTM). While the national route is fairly simple in that it involves only one jurisdiction, there are several features of the CTM which often need detailed explanation so here is a basic guide:

The Community Trade Mark

General

• It is a unitary system providing a single registration which covers the whole of the EU.
• It therefore covers Austria, Belgium, Denmark, Finland, France, Germany, Greece,Ireland, Italy, Luxembourg, Netherlands, Portugal, Spain, Sweden, United Kingdom, Czech Republic, Estonia, Cyprus, Latvia, Lithuania, Hungary, Malta, Poland, Slovenia and Slovakia.
• Member of the International trade mark registration system.

Community Trade Mark Applications

• Application can be filed and examined in English. Need to designate a second language, e.g. French, for opposition purposes.
• Can claim priority from earlier national application.
• Can claim "seniority" from EU national registration (this means supplanting all identical national registrations by one CTM).

Search, Examination, Publication and Registration

• Formalities examination.
• EU national registers and Community Trade Mark register searched, but this is proposed to be abolished.
• Proprietors of Community Trade Mark citations notified.
• Examination on absolute grounds, without an examination of third party rights.
• Once in order, application published for opposition purposes.
• 3-month non-extendable opposition period.
• 2-month 'cooling-off' period - if settlement reached no award of costs, opposition fee refunded.
• If not opposed, proceed to registration on payment of registration fee.
• Single renewal fee every ten years.

Validity and Infringement

• Application can be opposed on the basis of a prior EU national or Community Trade Mark application/registration.
• If opposition succeeds or application otherwise refused, option to convert to selected national applications.
• Infringement proceedings heard before national courts - possibility of 'forum shopping'.
• Use in one EU state sufficient to maintain registration across EU.

Advantages of the Community Trade Mark System over National Marks

• When the mark is used or intended to be used in at least three EU states; this reduces costs.
• Allows protection even in States where mark has not yet been and may, or may not, be used in future.
• Possibility of conversion to national applications if problems encountered.
• Useful when the mark is a 'key mark' - i.e. of particular significance, such as a house mark - even if national registrations already in place.
• Once on register the Community Trade Mark will be cited against later, conflicting Community Trade Mark applications.
• The proprietors of the cited mark are notified and if they do not withdraw their mark an opposition can be filed against it.
• Can pay single renewal fee, with significant cost savings.
• Use in one EU state will keep registration alive across EU.
• May have greater prospects of forum-shopping prior to infringement action.
  

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