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BM Nyman & Co

Publishing Lawyers

BM Nyman & Co

Bernard Nyman
Sole Principal

25 Limes Avenue
London
N12 8QN
UK

info@bmnyman.co.uk

Tel: +44 (0)20 3601 4163
Fax:  +44 (0)20 8445 2852
Trade Marks Print E-mail

Trade MarksTrade Marks are a vital part of the Intellectual Property assets that any business, no matter what its size, should have. A trade mark is one of the key things that enables one business -- your business -- to distinguish its goods and services from those of another. A business may have just one trade mark or it may have several or even a great many trade marks, depending on the nature and scale of its business operations. The trade mark or trade marks owned by a business collectively form a significant part of the corporate identity of the business.

What is a trade mark?


A trade mark is defined in UK law as:

"any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging."

A trade mark is therefore a "sign" and it must be capable of being "represented graphically". Many trade marks are simply words. Others are words combined with some sort of design or artwork to form a logo. Others consist of a combination of letters. But a trade mark could even be a sound or a smell, if capable of being "represented graphically".

Benefits of registering a trade mark


If you register your trade mark, you get the following advantages:

  • You can put the ® symbol alongside your trade mark, wherever you use it, to warn others that it is registered and that they should not use it without your permission;
  • It may put people off using the same or any similar trade mark in relation to the same or similar goods or services without getting your permission;
  • You can sue an infringer if they do use the same or a similar trade mark in respect of the same or similar goods or services without getting your permission beforehand;
  • It enables Trading Standards Officers or the Police to prosecute counterfeiters if they use your trade mark;
  • It is your property, and so you can sell it or license it to third parties, and it will form part of the assets of your business. Depending on the nature of your business, it might well form a very significant part of the assets of your business. For example, if your business is a franchise operation, where you license franchisees to operate businesses using your business method, your registered trade marks will be vital to the viability of the business. Similarly, if your business is in developing characters to be exploited through merchandising, trade mark protection is essential and adds great value to the business. If you are a publisher, then each of your imprints would be a trade mark.

 

What marks are capable of being registered?


A trade mark must be distinctive for the goods and services you provide. This means that it must be recognised as a sign that differentiates the goods and services provided by your business from those provided by other businesses. This distinctiveness may be inherent in the mark itself, or it may have been acquired by reason of widespread use of the mark over a period of time.

Made-up words, logos or pictures are normally distinctive, and therefore registrable, unless they have become customary to the line of business for which you seek to register them, or if they are too similar to an existing registered trade mark.

Examples of particularly strong trade marks include the following: Coca Cola, KODAK, IBM, Intel and BlackBerry. They don't describe the goods and services for which they are registered.

If a mark describes the goods and services that your business provides, e.g. by indicating the quality, quantity, purpose, value or geographical origin of your goods or services, then it is unlikely to be registrable. For example, the following are unlikely to be registrable as trade marks:

"French Cheese Direct": firstly, it describes the goods and services provided (French cheese delivered direct to the consumer) and secondly it indicates the geographical origin of the products.

"The best tax accountants in the north of England": again, it describes the services on offer and this type of slogan (or "puff") would not be regarded as distinctive. It also gives an indication of the geographical origin of the services.

How I can help with your trade marks

 

1. Advice on registrability of trade marks


It makes sense for a business to appreciate, and get advice on, the benefit of registering trade marks early on in the life of the business -- often even before actually commencing business.

I can advise you on whether your business has, or is intending to use, marks that are capable of being registered, and whether you should register them, and if so, the extent of the registration that you should be looking for, namely:

  • the categories of goods and services for which you should seek registration; and
  • the territories in which you should seek registration; and
  • how to go about registering the trade marks.

 

2. Considering trade marks alongside other Intellectual Property rights


Whilst identifying trade marks that can be registered is very important, at the same time it is essential to consider what other intellectual property is generated by the business, and ensure that this is also protected. For example, this could include:

  • Copyright [insert link to copyright page] works created by employees and freelance workers;
  • Designs [insert link to designs page] capable of being registered in the UK and elsewhere;
  • Internet domain names -- these are very much intertwined with trade marks, because, just like trade marks, they form part of the brand identity of your business, and so it is essential to ensure that they are not "hijacked" by rival businesses.

 

3. Ensuring that employees' and freelancers' contracts contain appropriate provisions


There is a general rule that the "author" of a copyright work is the first owner of the copyright in it, but one major exception to this rule is that where an employee creates copyright works in the course of his employment, then the copyright will belong to the employer in the first instance, unless there is an agreement to the contrary. But this exception does not apply to freelancers, so if your business employs freelancers, you must check to ensure that your business is the owner of the copyright -- and all other Intellectual Property Rights -- in the works that they create while working for you. Don't just rely on the statutory provisions, however -- it makes sense to ensure that all employees' contracts, as well as those of freelancers, contain a clause covering ownership of all Intellectual Property Rights.

4. Coordinating a strategy for protecting and exploiting trade marks and all Intellectual Property Rights


I can help by:

  • Developing with you a strategy to identify what Intellectual Property exists within your business and to ensure that your trade marks and other Intellectual Property Rights are registered, where necessary, and otherwise secured;
  • Advising on licence agreements and other ways for unlocking the commercial value of your Intellectual Property, and drawing up any necessary contracts.

 

How do I get a trade mark registered?


That depends. Primarily, it depends on where you would like to protect your trade mark. Registered trade marks have legal effect only in the territories in which they are registered. For example, a trade mark registered in the UK will not prevent a competitor using the same or a similar trade mark for the same or similar goods or services in, say, France.

United Kingdom:


If you only require, or can only afford (e.g. for a start-up business), to register a trade mark in the UK, application is made to the UK Intellectual Property Office ("UK IPO"). There are forms to fill in and official fees to be paid (which depend upon the number of trade marks applied for and the number of categories of goods and/or services in respect of which each mark is applied for), and the application will then be processed (examined) by the UK IPO.

However, you can apply to register a trade mark in all or any of the countries that provide for trade mark protection -- but it can work out very expensive.

Fortunately, two systems have emerged which enable trade marks to be applied for and, if successful, registered in more than one country at a time. These systems are quicker and cheaper than making separate applications to register in each of the countries covered by these systems.

European Union:


Firstly, there is the Community Trade Mark ("CTM"), which can provide a trade mark that is valid in each of the countries of the European Union. This system is operated by the Office for the Harmonisation of the Internal Market ("OHIM").

Madrid Protocol:


Secondly, there is the Madrid Protocol, which includes the European Union, the USA and various other countries, and this is operated by the World Intellectual Property Organisation ("WIPO").

Online filing:


One very important recent development is that trade marks can be applied for online, and there is even a financial incentive, in the form of lower official filing fees, to do so.

What if I have a trade mark but it is not registered?


You may still be able to take legal action to protect against the unauthorised use of your unregistered trade mark by means of an action for "passing off". However, you would need to establish the following:

  • a misrepresentation
  • made by another trader in the course of trade
  • to prospective customers of his or ultimate consumers of his goods or services
  • which can reasonably be foreseen to be likely to injure your business or goodwill; and
  • which causes actual damage to your business or goodwill, or will probably do so.


The essence of an action for passing off is that another trader is misleading his own customers into believing that his goods or services are yours or that there is some connection between the two, when in fact there is not. The other trader thereby takes unfair advantage of the goodwill that you have established in your business for your goods or services – in effect taking business away from you.

Legal actions for passing off are notoriously complex, expensive and uncertain. An action for infringement of a registered trade mark, on the other hand, is generally more predictable and should be cheaper and quicker.