Trade marks are a means by which businesses can distinguish their brands from others in the marketplace by limiting the way in which words and/or logos can be used in connection with products or services. There is no need for a trade mark to describe what the business does or the sector it operates in. There are numerous high profile examples of this (e.g. Apple, Amazon, Marks & Spencer).
Restrictions
Registering a trade mark with the UK Intellectual Property Office gives you the sole right to use the mark in the UK in connection with the goods and services you have specified, unless you choose to license or sell the right to someone else. A trade mark application made in the UK only applies in the UK.
There are some restrictions regarding registration, however. You cannot trade mark a generic term or a word that describes your goods or services – e.g. if you manufacture mattresses, you cannot simply trade mark ‘soft mattresses’. Similarly, the words you use must be distinctive, cannot be offensive and cannot be capable of misleading the public into thinking that something is better quality than it is. A number of symbols are not capable of protection – such as flags and hallmarks as well as names of inter-governmental organisations.
Benefits of Registration
If you own a registered trade mark, no one else can use it in connection with the goods and services you specify at registration. Goods and services are classified into forty-five different classes: the more classes you want to protect, the more it will cost. In the event that someone uses your trade mark without permission, you can take legal action against them. Counterfeiters of registered trade marks can be tried in the criminal courts.
Unregistered Trade marks
There is some protection afforded by the law for unregistered trade marks with the common law action of ‘passing off’, but enforcing these rights can be costly and time-consuming. In order to be successful, you would be required to prove not only that the trade mark is rightfully yours but also that it has its own value that has been exploited or harmed in some way by another person’s use of it.
Limited Companies
There is a common misconception that registering the name of a limited company with Companies House provides the owner with protection in relation to that name, but this is not the case. To protect the name, it must be registered separately as a trade mark. It should also be noted that being the registered trade mark owner does not automatically entitle you to the corresponding Internet domain name, although in the event of a dispute you are much more likely to succeed in obtaining the domain name if you already own the registered trade mark.
If you would like advice about protecting the intellectual property of your business, contact us.