What is a trade mark?
A trade mark is a word, logo, slogan, colour, shape or numeral (or combination of these) with which a consumer identifies a particular product or service.
The trade mark allows the consumer to distinguish the products or services of a particular business from its competitors.
When should I register a trade mark?
Applications for trade marks should be filed at conception stage of a product or service, allowing time for them to be registered before a product launch.
Changing a mark after use has commenced can be a very expensive exercise in commercial terms and can result in the loss of valuable goodwill established in the original name.
It is estimated that in the region of 30% of research and development conducted in Europe is wasted on products, which already exist.
Early filing of a brand deters competitors from adopting the same or a closely similar mark.
How do I register a trademark?
The first thing to do is carry out a trade mark search.
Having completed a trade mark search, the next step is the trade mark application.
This is then prepared and filed by Armadillo's team of in-house trade mark professionals.
Armadillo will need the following details:
- The trademark
- The name and address of the applicant
- Details of the product or service with which the trademark wishes to be associated
Who can register?
Any individual or corporate body with a trade mark may register.
How long will it take?
In general it takes 9 months to 2 years to register a trade mark (depending on the country).
Will my trade mark be protected forever?
Each mark remains registered for 10 yearly periods, subject to the renewal fees being paid.
Can I change my logo or trade mark after registration?
No. In order to do so, you will need to carry out a new trade mark registration.
Is it possible to lose a registered trade mark?
A third party can apply to revoke or invalidate a registered trade mark.
Within the UK and the EU, failure to use the mark continuously for 5 years can result in a trade mark being revoked.
A trade mark can also be lost if the use of the mark is considered to be misleading to the public.
If a third party can prove that the mark should have been refused, they may apply for it to be invalidated.
What is the difference between the symbols 'TM' and '®'? When can they be used?
'TM' means that the mark is being used as a trade mark, whether registered or not. '®' Represents only registered trade marks and it is an offence to use one with an unregistered trade mark.
Does an unregistered trade mark give any protection?
An unregistered trade mark relies on common law rights to prevent the use of the mark by a third party.
This is referred to as an action for passing off. In order to do so and succeed, several factors need to be proved.
One must prove that they have goodwill and a reputation. It also needs to be proven that your opponent has made a misrepresentation and that as a consequence you have suffered damage.
These factors are known to be not only expensive, but problematic to prove. Passing off actions are generally much more costly than settling trade mark infringements.
Therefore, if you do not have a reputation - as many medium sized companies do not - you cannot succeed in the action of passing off. Without reputation, it is virtually impossible to have protection.
I have registered my company/business name as a domain name. Do I need to register it as a trade mark as well?
Yes. Carrying out a domain name registration to get your business/company name on the World Wide Web is not enough to stop someone else from registering it as a trade mark.
In fact if they do so they could prevent you from registering it as a domain name in the first place or take action to get you to hand over control.
I have registered my name as a company name. Do I need to register it as a trade mark as well?
Yes. Completing a company formation to register a new limited company is enough to stop other people registering a business under the same name, but not enough to stop others registering your business name, logo or slogan as a trade mark.
So it is important to protect your interests by completing a trade mark registration as soon as possible.
Can I register an identical mark under different classes?
Identical marks can co-exist if the goods are different e.g. LOTUS is registered by separate entities for goods such as cars, shoes and computer software.
If LOTUS LONDON was applied for however, this would still be considered as similar to LOTUS. An objection raised may only affect 1 class but not necessarily others. It really depends on the actual goods and services specified within those classes.
What is trade mark infringement?
If an identical or similar trade mark is used for identical or similar goods and services to a registered trade mark - you may be infringing the registered mark if your use creates a likelihood of confusion on the part of the public. This includes the case where because of the similarities between the marks the public are led to the mistaken belief that the trade marks, although different, identify the goods or services of one and the same trader.
Where the registered mark has a significant reputation, infringement may also arise from the use of the same or a similar mark which, although not causing confusion, damages or takes unfair advantage of the reputation of the registered mark. This can occasionally arise from the use of the same or similar mark for goods or services which are dissimilar to those covered by the registration of the registered mark.
If you have an enquiry please contact our specialists for FREE advice and consultation on +44(0)1462 427 300 or email us email@example.com