A trade mark or brand is a sign which identifies the origin of goods and services of one undertaking so as to differentiate them from those of its competitors.

A trade mark is a cornerstone aspect to any business. It signifies the brand and denotes quality associated with that brand. It is an identifying sign that differentiates one product from another and it attracts a goodwill value dependent upon its reputation and can create customer loyalty. It is the trade mark that tells the public the difference between “Burger King” and “McDonalds”. It is the trade mark that enables the market to differentiate between the “Whopper” burger and the “Big Mac” burger (that and the taste). It is the trade mark that creates customer loyalty and repeat business. A trade mark is a potentially valuable piece of property and can be bought, sold, infringed and stolen.

Trade marks can be a word, logo, label, slogan, jingle, or colour.

As a company grows the number of trade marks it has will grow and it becomes necessary to manage the portfolio. A portfolio of trade marks may include:

– the Company Name (McDonalds; Nestle; Nike);
– major product lines (Big-Mac; Maltesers; AirMax)
– slogans (I’m Lovin It; Just Do It)
– domain names

There are three trade mark functions:

the ‘essential function’ indication of origin (to tell the public where a product has originated from);

the ‘advertising’ function (to advertise a product and/or brand); and

the ‘investment’ function (to protect the value of investment built up in any respective trade mark).

A trade mark is something that is created in and of itself through repeat commerce. It can be registered or unregistered. The advantages to registering a trade mark is to put beyond doubt who the original owner of that trade mark is so to protect that owner accordingly and allow that owner to possess rights to sue another for infringement without having to first prove that they are the rightful owner.

Given the importance of trade marks and the rights they bestow upon its owner, it is best to register a trade mark. A trade mark can be registered at the Intellectual Property Office of the jurisdiction in which the trade mark owner operates (for example a brand owner operating in the UK would register its trade mark with the UKIPO. If that brand owner also carried on business in Germany, they may seek to register their mark in Germany or as a community EU mark also).

There are disadvantages to not registering a trade mark. Primarily, where a trade mark is not registered, third parties may register the same mark and acquire the exclusive use rights themselves. If this happens, it would require the unregistered mark owner to have to prove its rights to the mark in court based on its earlier use under the common law action of passing off. This can prove difficult and costly.

Unlike the starting position with a registered trade mark owner, passing off actions require the proprietor of the mark to evidence the following at least in order to succeed in its claim:

ownership of goodwill or reputation in the mark
that the unauthorised use of the mark results in a misrepresentation which causes, or is likely to, cause damage.
Often the only way to show reputation in the case of unregistered marks is to involve market research companies and experts, which adds expense and may be received unfavourably by a court. It is also particularly difficult to show reputation or goodwill in new marks, meaning it can be hard if not impossible to enforce. As may be expected, there may be little protection for the unregistered mark holder, and smaller company with less resources may find itself without recourse against a larger and more aggressive competitor.

The current position under the Trade Marks Act 1994 is that any mark that is  capable of distinguishing the goods or services of one undertaking from those of another may be registerable as a UK trade mark, subject to the ’absolute‘ and ’relative‘ grounds for refusal (Trade Mark Act (TMA) 1994, s 1), (See Below).

Note: previously it was a requirement that a mark must be capable of graphic representation. With the advent of the internet and increase in things such as sound files, this requirement became problematic. On 01 October 2017 the EUTM regime removed this requirement, instead requiring that it is simply necessary for the sign to be capable of representation on the register. This change was also recognised for UK TMs from January 2019 (via the Trade Marks Regulations, SI 2018/825, which implement Directive (EU) 2015/2436 into English law).

Some types of trade mark are obviously easier to register than others and for the most part people will think of a Word mark, or logo.

Each trade mark must be registered for the type of goods or services

The International (Nice) Classification of Goods and Services for the purposes of the Registration of Marks sets out the classifications for Trade Marks: VIEW HERE

The classification is divided into 45 classes of goods and services. Each class has a heading giving a broad indication of the type of goods or services in that class. A detailed alphabetical list of goods and services specifies the class in which each listed item falls.

It will be necessary to register your trade mark with the registry that exists for the relevant territory in which you carry on business. If you carry on business in the UK then you would register with the UKIPO. This provides protection within the territory that the registry covers (i.e. UK). You should register your trade mark in whichever territory in which you carry on business and want to protect your brand. For example if you also operate in the USA, then you should look to register a trademark with the US Patent and Trademark Office. It is important that you register your mark in the appropriate territory. If you register your mark in a territory in which you do not operate nor plan to operate in the near future, then your registration may be deemed void for non-use or even anti-competitive.

Registering in the UK

It has been possible to register trade marks for goods in the UK since 1875.

The UK trade mark system is administered and maintained by the Intellectual Property Office (IPO).

UK Trade Marks are protected by the Trade Marks Act 1994 (TMA 1994), which implements the Directive 2008/95/EC into English law. A new Directive (EU) 2015/2436 was implemented by the EU Member States in January 2019 via the Trade Marks Regulations 2018, SI 2018/825. However, following the UK’s exist from the EU, this has altered. Now trade marks will not be enforceable unless they are registered in either the UK or EU territory (whichever should apply).

Registering in the EU

The European Union Trade Mark (EUTM) register is administered by the European Union Intellectual Property Office (EUIPO) and was introduced in 1996.

The EUIPO was formerly known as the Office for Harmonisation in the Internal Market (OHIM).

The EUTM system provides for one single registration procedure, consisting of: a single application, a single language of procedure, a single administrative centre, a single registration and a single file to be managed.

An EUTM is valid in all EU Member States and gives protection across the whole of the EU. It is not possible to limit the geographic scope of protection to certain Member States.

EUTMs are governed by Regulation (EU) 2017/1001 (which codifies the amendments made to Regulation (EC) 207/2009 by Regulation (EU) 2015/2424).

Registering Worldwide

The Madrid Protocol is an international registration system has been in operation since April 1996 and has been ratified by 84 countries around the world, including most European countries individually, as well as the US, Japan, Australia, China, Russia, and the European Community.

It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva.

This is a centralised procedure which offers applicants the possibility to have their trade marks protected in several countries by simply filing one application directly with their own national or regional trade mark office.

There must be an existing national application in the applicant’s country of establishment which is used as a basis for the international application. The international application must contain a specification of goods and services either identical to or narrower than the home application or registration. Therefore, the home registration must cover a sufficiently broad specification of goods and services.

The applicant designates the jurisdictions in which it would like the mark to be registered. WIPO processes the application and then sends it to the relevant jurisdictions, which have 18 months to oppose. The extent of the examinations carried out will vary between countries. This has the same effect as applying directly for a national trade mark.

Since 1 October 2004, it has been possible to designate the EU in an international application to obtain protection with the same effect as a direct EUTM.

The most appropriate route to take will depend on the particular individual circumstances of the applicant.

National Registries

This strategy involves a separate trade mark application to each relevant national trade mark office in which you carry on business or plan to carry on business in the future and wish to protect your mark. It offers the most flexibility in that you can pick and choose the specific territories in which you apply for registration.

However, this could be more costly as you will need to deal with multiple registries and engage the services of local attorneys. It also gives rise to trademark portfolio management responsibilities to upkeep all of your registrations.

It may therefore be best to register at a registry that covers multiple territories, such as an EUTM, which covers all EU member states, or a USTPO US wide trade mark, instead of specific States.

EUTM

Registering an EUTM or Community Mark is a single application that covers all member states in the EU.

It is convenient and easier to manage compared to registering at multiple registries and offers pan-European relief against all infringing acts in the EU. This is likely to be cheaper and quicker than seeking relief on a country-by-country basis, although it may be more complex. It also allows possible forum shopping based on law, procedure or costs, although there are specific rules governing which courts would have jurisdiction over an infringement or invalidity action concerning a EUTM depending on particular circumstances

However, They are vulnerable to attack on grounds which apply in any part of the EU. If the mark is successfully opposed or invalidated in one state, it will be lost for the whole EU

EUTMs are capable of being licensed for separate territories, and for some or all of the goods or services for which they are registered. They can be assigned for some or all of the goods or services for which they are registered, but must be assigned on an EU-wide basis

If the EU undergoes any future enlargement, any EUTM registered or applied for will be automatically extended to the new member states without formality or fee

BREXIT NOTE: Under the withdrawal agreement, holders of EUTMs and international trade mark registrations designating the EU that are registered before the end of the transition period would become holders of comparable trade mark rights in the UK. Equally, the UK government has legislated to ensure that in the event of a no-deal exit, the property rights in all existing registered EUTMs and international trade marks designating the EU would continue to be protected and enforceable in the UK by providing an equivalent UK right from exit day. Either way, after exit day or the end of the transition period (as applicable), EU trade marks and international trade marks designating the EU will no longer subsist or be enforceable in the UK.

International WIPO

Again a single application to cover multiple jurisdictions has positives for costs and portfolio management purposes and it allows an owner to pursue infringements on a country-by-country basis, however use requirements would need to be met in any particular jurisdiction to avoid the risk of revocation, so it is not simply a blanket protection against all potential infringing activities globally.

If the home registration is successfully challenged within the first five years, the entire international registration will fall. It is possible to re-apply for individual national marks while retaining the benefit of the original filing date, but this would involve considerable cost

For this reason, if you are operating cross-border it may prove prudent to register your trademark in your home registry first and foremost, and then follow up with any additional registrations, so that if a pan-territory registration was ever attacked and/or revoked, this would not impact the registration of your mark in the different territory registries.

To register a TM two criteria must be satisfied:

1. It must not fall into the Absolute Grounds for refusal; and
2. It must not fall into the Relative Grounds for refusal.
3. A) Absolute grounds for refusal 

The ‘absolute’ grounds for refusal are set out in TMA 1994, s 3 and Article 7 of Regulation (EU) 2017/1001.

A trade mark can be refused on absolute grounds where:

1. the mark is devoid of distinctive character—eg it is too generic, such as SOFA WORKSHOP for furniture and related goods and services
2. the mark is descriptive (ie it consists exclusively of signs or indications which designate the kind, quality, quantity, purpose, value, geographical origin or other characteristics of the goods or services for which it is being used (when taken as a whole))—eg TREAT for dessert sauces
3. Each of the above can be overcome if the applicant can show distinctiveness acquired through use (eg CARPHONE WAREHOUSE for phones).

In addition, a trade mark can be refused on absolute grounds if any of the following should apply:

1. the mark consists exclusively of a shape (or another characteristic) which results from the nature of the goods (this is to protect basic shapes that should be available for use by the public—eg bananas)

• the mark is offensive contrary to public policy or morality—eg JESUS has been refused for a variety of goods and services

1. the mark was applied for in bad faith—eg the applicant has no intention to use the mark as a trade mark, but wishes to prevent someone else from using it
2. the mark is a specially protected emblem—eg Royal coat of arms
3. the mark is protected as a geographical indication—eg DORSET BLUE for cheese

• the mark is deceptive—(ie there should be nothing in a mark which would lead the public to think that the goods and services offered under that mark have a quality that they do not)

These particular grounds cannot be overcome even if able to demonstrate distinctiveness through use.

1. B) Relative grounds for refusal

The ‘relative’ grounds for refusal are set out in TMA 1994, s 5 and Article 8 of Regulation (EU) 2017/1001.

Relative grounds for refusal apply when the registry identifies earlier marks which conflict with the trade mark applied for.

In summary, a trade mark can be refused on relative grounds where:

1. the mark is identicalto an earlier trade mark which is registered for identical goods or services—eg REED is not identical to REED ELSEVIER

1. the mark is similarto an earlier trade mark which is registered for identical or similar goods or services and there is a likelihood of confusion with the earlier mark—eg PLAY-DOH and PLAY-DOUGH are similar

1. the mark is identical or similarto an earlier trade mark; the earlier mark has a reputation in the UK; and the use of the later mark without due cause would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark—eg KLAREIN for liquid detergent infringed CLAERYN for gin because it was detrimental to its repute (consumers might think of the detergent when drinking gin and be put off by that association!)

The relative grounds do not apply if the proprietor of the earlier mark consents to the registration of the later mark.

‘Likelihood of confusion’ is assessed globally, taking into account all relevant factors such as visual, aural and conceptual similarities between the marks, bearing in mind the overall impressions created by each mark.

It may also be possible to block the registration of a trade mark based on other earlier rights, eg unregistered trade marks, copyright, design right, registered designs or protected geographical indications.

Therefore, some view the best option is to use a mark which has been made up, and/or which has no connection with the goods for which it is to be used.

Registration confers on its proprietor the statutory right to the exclusive use of the mark in connection with the goods or services for which it is registered (section 9 TMA). Registration therefore gives the proprietor the right to sue for trade mark infringement any person who uses an identical or similar mark (a “sign”) in the course of trade in connection with identical or similar goods without authorisation. The proprietor must show that the use has caused or is likely to cause confusion, except in cases where the marks are identical (section 10, TMA).

Trademark Infringement – Civil

A trade mark proprietor is entitled to prevent unauthorised third parties from: putting the registered mark onto their goods or packaging; offering goods, putting them on the market or stocking them for commercial purposes using the registered mark; offering or supplying services carrying the registered mark; importing or exporting goods under it; and using it on business papers and in advertising.

Trademark Infringement – Criminal Offences

In addition to civil infringement claims, the TMA 1994 provides for certain criminal offences in respect of trade mark infringement, including:

• applying to goods or packaging a sign identical to or likely to be mistaken for a registered trade mark.
• selling, hiring, or distributing goods bearing such signs.
• possession of such goods with a view to selling, hiring, or distributing them.
• applying such signs to various labels, papers and advertising materials.
• making of possessing copying equipment.

The offender must be acting with intention to gain for himself or another, or to cause loss to another and without the consent of the trade mark proprietor.

The offence must be in relation to goods for which the trade mark is registered or the trade mark has a reputation in the UK and the use of the sign takes unfair advantage of or is detrimental to the distinctive character or repute of the mark.

In R v M, R v C, R v T [2017] UKSC 58, the Supreme Court confirmed that, in addition to pure counterfeit goods, criminal offences also extend to ‘grey market’ goods (ie items which have been manufactured with the trade mark proprietor’s permission and have had the trade mark applied to them with the trade mark proprietor’s permission, but are then sold without permission).

Who can bring infringement proceedings?

The TM owner can bring infringement proceedings against a potential infringer.

If co-owned, all co-owners must be joined in proceedings as either claimant or defendant.

If there is a licence given in respect of a trade mark, then the licensee may bring a claim if:

• it has called on the proprietor to do so and proprietor has failed to do so (UK and exclusive EUTM licensee)
• the proprietor gives the licensee consent to do so (UK and EUTM)
• the licence is an exclusive licence (UK)

Remedies Available

The remedies for trade mark infringement may include:

• Injunctions to stop ongoing use;
• Damages or an account of profits, relating to the period after the trade mark proprietor applied for the mark (UK) or after the application was published (EUTM)
• Orders for erasure, removal or obliteration of offending signs from infringing goods, materials or articles
• Orders for delivery up and destruction of infringing goods, materials or articles
• Dissemination of judgment

When a person does not agree with the trade mark application of another, there are various rights available to them.

When a UK trade mark application is accepted, it is advertised in the IPO’s online Journal. Then follows a two-month period (extendable to three months if a notice of threatened opposition is filed) in which parties may oppose registration.

There are two ways in which a mark can be objected to:

1. Third party observations – at any point after an application has been published, and prior to registration, it is open to anyone to make ‘third party observations’.

Third party observations are not a formal legal action and the IPO is not bound to act on them. The IPO may, however, rely on evidence given in an observation to support any later objection to the application.

1. Threat of and/or formal Opposition

Opposition is the formal legal procedure that allows third parties to try to stop a published trade mark application going on to become registered.

An opposition can relate to the entire application or to only some of the goods or services it covers.

When a party may oppose:

A party may oppose a mark on either absolute or relative grounds.

Absolute grounds cover where the trade mark is one which is not unique to the applicant and should be free for everyone in that line of trade to use.

Relative grounds cover where the opponent owns a trade mark (registered or unregistered) which is the same as, or similar to, the trade mark applied for (relative grounds).

The IPO provides for a nine-month ‘cooling off period’ (extendable for up to another nine months), which suspends the opposition timetable to allow the parties to negotiate a settlement or co-existence.

On what grounds a party may oppose an application:

• Similarity of marks

An overall assessment will be made of the visual, phonetic and conceptual similarities, based on the overall impression given by the marks, bearing in mind their distinctive and dominant components.

Similarity is judged from the point of view of the consumer in the countries in which the earlier mark is registered. The average consumer is reasonably well-informed, observant and circumspect.

• Similarity of goods and services

Consideration is taken of the nature of the goods/services, their end users, their methods of use and whether they are in competition with each other or just complementary.

Likelihood of confusion only needs to be demonstrated in one country in the EU for a EUTM. Likelihood of confusion may be different in different jurisdictions because of different pronunciations and meanings. Opponents could use this tactically.

• Earlier trade mark has a reputation and the use of the later mark would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier mark

 Evidence of the reputation of the earlier mark in the relevant territories prior to the later application is required.

There must be a link established between the two marks—the later mark should call the earlier mark with a reputation to mind.

Invalidation is the legal procedure that results in removal of a trade mark from the register.

If a mark is declared invalid, it is wiped from the record as though it had never existed.

Applicants can apply to remove the entire registration, or only some of the goods or services that it covers.

UK invalidity proceedings can be initiated in the IPO or the High Court.

The relevant date is the date of registration—the grounds of invalidity must exist from this date. A mark will not be declared invalid if it did not have distinctive character at the time of application, but it has acquired distinctive character subsequently through use.

If applying under relative grounds, there must be an earlier registration or application that pre-dates the application for the challenged mark and only those with an interest in that prior mark can apply on these grounds.

The earlier rights holder, if it knows that the later mark has been registered and used, has five years from the date of registration of the later mark to challenge its validity, even if it had knowledge of the application for the mark prior to registration.

Earlier third party ‘passing off’ rights may also be used to invalidate a subsequently registered mark under national law or EU law.

Revocation is the legal procedure that allows anyone to try to remove a trade mark from the register. Grounds for revocation can only exist post-registration.

Revocation is effective, and proprietor’s rights cease, from the date of application for revocation, although the registrar can backdate this if appropriate.

An application can be made to revoke or partly revoke a registered trade mark where it has not been used in the UK (or the EU as applicable) on the goods or services for which it is registered, either by the proprietor or by someone else with the proprietor’s agreement:

in the five years following registration of the mark, or

for any uninterrupted period of five years after registration

and there are no proper reasons for non-use—usually proper reasons will be circumstances which prohibit the trade mark owner from using the mark (other than commercial decisions within the owner’s own control).

What constitutes genuine use?

For EUTMs, it is possible genuine use may be found when the mark has been used in only one part of the EU, such as in a single Member State. However, this is not the only factor the court will consider, so even then, use in a single Member State as the only evidence of use may not be sufficient.

In assessing whether a trade mark is being “used”, the court will consider three three functions of a trade mark (see essential functions of a trade mark here).

Carrying on business using the trade mark in a territory is the obvious example of use, however use can also be satisfied through other more indirect uses such as a third party distributor or agent using the mark on the owner’s behalf in that territory; use of component parts marked, for use in other goods in a territory; use through import and export of goods through a territory or on signs or labels; or use on packaging

A rather technical point for any trade mark portfolio manager is that use of a similar, but separately registered mark, does not extend to use of a mark, meaning brands that may have multiple registrations for similar marks for the same brand must chose with care which mark they wish to enforce their rights under.

Provided there is a commercial purpose to such use, there is a low threshold to prove use, and no quantitative rule, and even dealings between intermediaries in that jurisdiction, such as through import and exports can constitute use, so it does not need to be an out-right commercial use of direct commerce within a territory in order to satisfy the threshold.

Other Actions

Rectification

Rectification is the legal procedure which allows anyone to apply to correct an error or an omission that has been made in the recorded details of a registered trade mark.

Intervention

Anyone, other than the proprietor, who claims to have an interest in a registered trade mark may apply to become involved (in legal words ‘intervene’) in post-registration legal actions.

If a business uses a number of brands, it is important to put in place a pro-active trade mark portfolio management strategy, to maximise the value generated by the trade marks and to ensure that their use is properly policed.

To learn more please see our note on IP portfolio protection measures here.

1. Timing

It is allowable to show an intention to use a mark, if for example the good or service is still in the pre-production stages. Any such intention must be bona-fide.

Therefore it can be very beneficial to apply for registration at the development stage of a new product/service so to ensure that the application will have been advertised and registered by the time of the product launch (and hence third parties attempting to register something similar will be put on notice of its existence).

2. Ensure renewal fees are paid

Marks need renewing every ten years on the anniversary of their filing date so it is important to ensure no filing requirements or fee payments are missed. In the event you miss an important filing or expiry deadline, you will be vulnerable to a third party making an application for their trade mark, which you would then need to oppose.

Some helpful tips may be:

• Diarise renewal deadlines.
• For large portfolios consider engaging a specialist portfolio management service.
• Maintain full details of all registrations.
• Specialist watch services can report on advertisements of applications for marks which are the same as or similar to the trade mark owners’ mark.

3. Use it or lose it(!)

Using your mark is the best defence against a revocation action for non-use.

Keep records and examples of use—this might also help establish a reputation for use in pursuing infringers.

4. Enforce it.

It is very important to monitor the market and in the event of any potential infringement, enforcing your mark. To do this you can give notice to third parties or would be infringers. A failure to properly monitor the market and put third parties on notice runs the risk of infringers being able to use your mark and your mark being unenforceable for non-use.

Trade mark owners should be prepared to act promptly upon discovering an infringement, but beware of the threats provisions.

A robust approach (possibly initiating infringement proceedings where appropriate) can get a trade mark owner the reputation of being a tough opponent which itself can act as a deterrent for infringers, although this can also have consequences so legal advice should be sought beforehand.

It is key to put third parties on notice of your rights

It is also possible to monitor a UK or international trade mark application or registration by sending the IPO a caveat request for information about events in the progress of a trade mark. A caveat is a warning, or notification, that some action has taken place on a trade mark application or registration. The IPO does not tell the owner of the mark that a caveat is in place.

The most common reasons for filing a caveat is to be notified when an application is advertised, or if it fails before advertisement. A caveat is also a useful way for a proprietor to check the progress of their own application.

It is possible to apply to customs authorities either centrally or on a national basis to ask them to notify rights holders of any suspected infringing goods. If the goods are confirmed by the rights holder to be infringing, and the owner of the goods fails to respond, the goods can then be destroyed.

Employees should be made aware of the importance of trade marks and encouraged to be vigilant about any use of similar or infringing marks and competitors’ activity in the market.

5. Using symbols to notify the public of your trade mark

You should mark any sign you have to notify the public that it is a trade mark and you are the owner. To do this, you should place “TM” ™ after the mark if the mark is unregistered, or a “R” ® after the mark.

NOTE: Use of the registered symbol in relation to a mark that is not registered anywhere in the world is a criminal offence (TMA 1994, s 95).

Ai Law have published a comprehensive guide on how to protect your trademark.

What is a trade mark?
Why you should register your trade mark.
What can be registered as a trade mark?
The territorial extent and where to register your trade mark.
What you should consider when deciding where to register your trade mark.
When your trade mark can be refused for registration.
Trade mark infringement.
Pre-registration threat of opposition.
Threat of Invalidity.
Post-registration threat of revocation.
Trade mark portfolio management best practices.

Find our more here:
https://ai-trademarks.co.uk/a-definitive-guide-to-protecting-your-trade-mark/