Trade marks FAQs

WHAT IS A TRADE MARK?
A trade mark is a distinctive sign or indicator that is used to uniquely identify goods or service from those of others. It often takes the form of a word or logo but may also be a sound or smell.

DOES A TRADE MARK NEED TO BE REGISTERED?
In the UK, there are two types of trade marks. The first is an unregistered trade mark which may arise if there is sufficient goodwill and reputation in the mark. If a mark is unregistered, it will only be possible to enforce rights where an established reputation in the mark exists and someone has misrepresented their goods and/or services, causing loss. This is known as an action in "passing off" and is a notoriously difficult action to pursue, particularly when launching a new brand. The second is a registered trade mark. Registering a trade mark is therefore the best way to protect a mark, brand name and/or logo, as it is not necessary to rely on accrued goodwill in order to enforce your rights. Registration provides you with limited monopoly rights to use the registered trade mark.

ARE ALL TRADE MARKS REGISTRABLE?
Not all trade marks are registrable. In the UK, in order to be registrable, a trade mark must be distinctive but not descriptive of the goods or services to which it is to apply. Marks which are intentionally deceptive or illegal or which are or even resemble internationally protected symbols or names are not registrable. The existence of a registered company name does not automatically entitle the right to register the name as a trade mark. This is subject to trade mark registration requirements.

HOW ARE TRADE MARKS REGISTERED?
Trade marks are divided into 45 classes of different types of goods and services. A monopoly right is only conferred in the class or the part of the class for which that the trade mark is registered.

WHAT IS THE PROCEDURE FOR REGISTERING A TRADE MARK?
The process for applying for a UK trade mark is: Stage 1 - On receiving an application at the UK Intellectual Property Office (UK IPO) an examiner reviews it to determine whether the trade mark is registrable. A report will be produced usually within two months of the application being filed. If the application is rejected the applicant has six months to persuade the examiner that the objections are unjustified or to make appropriate amendments to the application. Stage 2 - Where an application passes Stage 1 the trade mark is advertised for three months in the Trade Marks Journal for three months during which time anyone may oppose the application. If the application is unopposed it will be registered. If it is opposed the application will be delayed until an agreement can be reached or the third party's opposition is rejected by the Trade Marks Examiner. The procedure for Community trade mark applications follows the same process. However, they are dealt with by the Office for Harmonization in the Internal Market (OHIM) based in Spain.

IN THE UK, ARE APPLICATIONS TO REGISTER MARKS WHICH CONFLICT WITH AN EXISTING REGISTERED TRADE MARK AUTOMATICALLY REJECTED?
No, however, up until 1 October 2007 the UK IPO would examine a trade mark application on relative grounds and reject any application to register a mark which was the same as or substantially similar to an earlier registered trade mark for the same or similar goods and services. The UK IPO now only examines trade mark applications on absolute grounds (i.e. to assess whether they are distinctive). It is therefore the responsibility of the trade mark owner to actively monitor new applications and oppose those that conflict with their earlier rights. Owners of a UK registered trade mark will automatically be notified of potentially conflicting trade mark applications by the UK IPO. However, it remains the responsibility of the owner to oppose the application. Owners of a Community trade mark that do not have a corresponding UK mark need to actively opt in to receive notifications from the UK IPO. It is therefore even more important to now set up a watch to actively monitor new trade mark applications to ensure you are aware of others applications to afford the opportunity to oppose an application before the relevant trade mark proceeds to registration.

DO I ONLY NEED TO REGISTER A UK TRADE MARK?
For businesses operating solely in the UK it is sufficient. However, where a business based in the UK has operations which extend into Europe or elsewhere they should consider whether it is necessary to register a Community trade mark as well as national trade mark in other countries to ensure that the mark is adequately protected. The key point to remember is that trade marks are geographically specific and need to be registered and managed in each country in which you operate.

HOW LONG DOES A TRADE MARK REGISTRATION LAST?
In the UK, a trade mark is registered for 10 years but can be renewed indefinitely in further 10 year periods.