CAN MY TRADE MARK BE REGISTERED?

Are you a business or individual interested in filing a trade mark application in the UK or Europe? If so, have you chosen the right trade mark? Is your trade mark registrable?

A trade mark is any distinctive sign that identifies the source of goods and/or services. Most commonly these will be words or logos which identify brands, manufacturers or service providers.

REGISTRABILITY OF YOUR TRADE MARK

Once a trade mark application has been filed the UK Intellectual Property Office (IPO) will examine the trade mark, prior to accepting it for publication. They will scrutinise the trade mark based on whether it is new and distinctive, not descriptive and is not a generic term within the relevant commercial field. When choosing a new trade mark it is therefore extremely important to understand the factors that determine whether a trademark is registrable.

…USE OUR EXPERIENCE TO HELP YOU

The trade mark attorneys at Albright IP can advise you on the requirements for obatining a registered trade mark.  Simply complete the contact form on the left hand side of this page, and our trade mark attorneys will promptly respond. Alternatively, why not give us a call?

HOW TO TRY AND MAKE YOUR TRADE MARK DISTINCTIVE

To avoid confusion in the market place a trade mark must be new and distinctive over existing trade marks. It must not be identical or confusingly similar to an existing trade mark application or registration. If it is felt that your trade mark will cause confusion with earlier marks, the Examiner will raise an objection. Your trade mark must contain more than simply an obvious image or piece of text. Ultimately the public must be able to distinguish between your trade mark and existing trade marks in your product or service sector. Below are some examples of distinctive trade marks.

1. GARNOLZ

This is a novel, made up word, which should be considered distinctive in relation to a wide range of goods/services.

2. RAINBOW FINANCIAL ADVISORY SERVICES

Although comprising of dictionary words, this example would be regarded as a trade mark because RAINBOW does not have any particular meaning or significance in the financial advisory sector. Note that without the word RAINBOW, this trade mark would simply describe the service and would not be registrable.

WHAT TO AVOID

Your trade mark must not describe a service or product, or be a term that has become customary in the field in which you wish to use the trade mark. This prevents individuals from unfairly securing the rights to text or images that other individuals may justifiably wish to use. Below are some examples of trade marks which are unlikely to be granted registration by the UK IPO.

1. DELICIOUSFOOD

This would not be registrable because it describes a quality of the goods and is laudatory.

2. FINANCIAL ADVISORY SERVICES

This this would not be registrable because it describes the nature of the services.

3. A PERFECT FIT

This would not be registrable because it is a commonly used promotional slogan.

Further examples of non registrable trade marks include.

1. A trade mark comprising a direct reference to the goods/services.
2. A trade mark comprising a geographical name where the location is well known for the particular goods/services.
3. A deceptive trade mark.
4. A trade mark comprising a functional 3-dimensional shape.
5. A trade mark containing a protected emblem.
6. A trade mark which promotes an illegal activity/substance.
7. A trade mark which contains either offensive text or imagery.

If the UK IPO considers that your trade mark application does not comply with any of the above, objection will be raised and ultimately registration may be refused. To progress the application further the issue must be overcome.

WHY NOT CONTACT ALBRIGHT IP AND LET US HELP YOU?

The trade mark attorneys at Albright IP are experienced in advising and ensuring that your trade mark is likely to be considered registrable, based on the intended usage of your trade mark. If you would like further information, please email us directly here or call +44 (0) 1242 691 801 to speak to a qualified British and European Trade Mark attorney.