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Trade Marks – the myths and reality of UK practice

by | Dec 19, 2023

Updated, original article September 2013

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10 misplaced assumptions

1.  I have registered my company name and domain name, so I’ve done everything I need to do.

No, you should protect your rights on the Trade Mark register too. There are three different registers that are relevant to new businesses in the UK. These are the Domain Names register, the Companies House register, and the Trade Mark register. Availability and protection on each of these should be explored and secured. In addition, the appropriate handles should be secured across the social media sites.

Please read the full article here.

2.  If I change my trade mark slightly by adding something extra, I will avoid an infringement action.

This should not be assumed. Unlike company names and domain names, Trade Marks will be compared on the basis of their similarity as well as absolute identity. As such, the owner of an established Trade Mark may be able to enforce their registered rights, or their reputation, if there is any potential for a customer to be confused. Small differences may not be sufficient to avoid a challenge, but each case will be assessed on its own merits.

3.  I have a logo and it is better if I register that, rather than just the plain words.

This is not necessarily true as the strongest enforcement rights will generally be available to the owner of a word Mark that has been registered in a plain font. An additional registration for a logo will enhance the owner’s position, and this is probably best filed in black & white, unless the colour aspect is the most distinctive element of the Mark. A registration for a logo, will protect a particular version of the logo, and more than one Application may be needed if various versions of the logo exist. A ‘series’ Application will be permitted in the UK, provided the criteria fit. This can be a useful way to maximise the scope of protection, whilst keeping costs low i.e., by filing a logo Mark in black & white and colour, within a single Application, for a single filing fee. We can advise further.

4.  I’m not using my Trade Mark, so I don’t need to register it yet.

This is not true. Time and budget permitting, it is wise to seek and secure a Trade Mark registration before the launch of a new product or service. Ideally, you will allow sufficient time for a Trade Mark application to proceed to the grant of registration; this takes around 4- 6 months from the date of filing. If so, you will have peace of mind against any objections (oppositions) being received from challengers against the application. In any event, the effective date of any Trade Mark right will be deemed to be the date an application was filed. You will wish to ensure that no one protects the Trade Mark before you do, either coincidentally, or by a deliberate attempt to undermine your position.

5.  I have registered my Trade Mark in the UK so should be fine to use my Trade Mark worldwide.

This is not the case. Trade Mark protection is territorial, and the same Trade Mark may not be available to register or use in some territories. You should consider protecting your Trade Mark in any territory where you have a serious intent to market your product or service. If so, it is recommended that you take advantage of the very useful six month ‘priority period’ running from the filing date of your UK Trade Mark application, to decide if/where to file overseas. Any foreign filings made within this priority period will be backdated to the same filing date as your UK application. You may not be ready to expand overseas at this early stage, and if the priority deadline is missed, you can file foreign applications at a later stage, but the actual date of filing will be allocated; the backdating advantage will no longer be available. There are various cost-effective foreign filing strategies that we can recommend, such as an EUTM Application covering the 27 countries of the EU, and the International (Madrid) Registration system. We can advise in more depth relation to these.

6.  I don’t think there is any difference between ™ and ® – anyone can use either.

There is a significant difference between the ™ and ® symbols.

In the UK and Europe, you are free to use the ™ symbol as you wish. This simply indicates that you regard the Trade Mark as being of commercial importance and wish it to be recognised as such.

By contrast, the use of the ® symbol is not permitted unless a Trade Mark registration has been granted. The use of this symbol is widely recognised and acts as a very strong deterrent against unwelcome copying.

7.  I registered my Trade Mark years ago and it still looks similar. Why would I re-register?

To be in a strong position to either enforce or defend your Trade Mark rights, the version of the Trade Mark being used should resemble as closely as possible, the version of Mark that is registered. Small differences in the versions of the Marks may not significantly impact upon your position, but each case will be decided on its merits, and nothing can be assumed. Additionally, it is important to ensure that the scope of the products or services registered continue to be broad enough to encompass any brand extensions/product development. We recommend an annual review of the adequacy of the Trade Mark protection that you have put in place.

8. Surely, I’ll find out if someone is using or copying my Trade Mark.

Not necessarily. You will need to actively ‘police’ the marketplace and the internet, as well as the UK and any relevant overseas Trade Mark registers, to assess whether your exclusive position is being compromised. In the UK (and in many overseas territories), it is the responsibility of the owner of an earlier Registration to ‘hold up’ a new Trade Mark application by objecting to it (filing an opposition), if they are concerned. We strongly recommend that you instruct us to set up a ‘watching service’ on your behalf as soon as you have secured a registration. This will ensure that any newly filed Trade Mark applications that you may be concerned about, are brought to your attention, and we can offer early advice as to how to deal with them.

9. My business is too small; I don’t need to protect my Trade Mark.

This assumption is unwise. The cost of seeking Trade Mark protection is low compared to the costs of marketing, advertising and production. You need to ensure that your investment in the development of the new product or service is supported, and that you are well placed to enforce or defend your rights against any third parties. Reliance upon a registered right is always cheaper and stronger than solely placing reliance upon unregistered rights and reputation. You will also wish to avoid the nightmare situation where someone else applies to register your Trade Mark before you, requiring an expensive action to seek to have their application refused, or to seek to prevent their use based only upon you proving you have acquired a reputation.

10.  I have chosen a Trade Mark that really describes what I do, so this is great.

Not really. Choosing a Trade Mark that describes the product or service that you provide may seem logical from a marketing perspective, but it may make it difficult for you to obtain a registration. A Trade Mark examiner will not allow a registration of a Mark that essentially describes the products or services that are provided under it. Moreover, as your brand becomes established, you will wish it to be set apart from your competitors, and choosing a distinctive Trade Mark will ensure that you or your company become uniquely identified by the consumers you are targeting, ultimately reducing the need for significant spend on marketing. In conclusion, the potential short-term gain of choosing a descriptive Trade Mark will quickly be overwhelmed.

 

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