When you start a business, it is essential that you use trademarks to protect your firm’s key intellectual property (IP) assets. In order to utilise trademarks effectively, it is vital that you familiarise yourself with UK trademark law. Turner Little lists the key facts you need to know about trademarks.
What is a trademark?
A trademark is a legal instrument used to protect IP such as names, letters, numbers, logos and designs. They are designed to safeguard the origin of goods and services, so if you are unsure whether something can be trademarked, ask yourself whether the intellectual property in question meets this criteria. A sign can be registered as a trademark by various companies for different goods and services.
Types of trademark
Under UK law, there are two principle types of trademark. The first is ‘UK trademarks,’ which are only applicable in the UK. The second is Community Trademarks (CTMs), which are applicable throughout the EU. In practise, the laws governing these two kinds of trademarks are similar in various EU member states. The information listed in the rest of this article only concerns UK trademarks. It is also possible to register a trademark in countries outside the UK and EU and Turner Little can advise on Trademarks globally.
Searching trademarks
Before registering a trademark, it is key that you determine whether doing so may infringe upon someone else’s IP rights. Search for your proposed trademark and any variations e.g. of spelling on major search engines e.g. Google and trademark registries to achieve this aim. For instance, if you want to register a trademark in the UK, EU and US, you would need to search at the UK IP Office, the EU’s Office for Harmonization in the Internal Market and the US Patent and Trade Mark Office.
Infringement issues
Under UK law, you may infringe a registered trademark if by using said trademark in the course of trade, it fulfils one of the following three criteria. First it is identical to a registered trademark for the same goods or services that your mark registered for. Second, it is identical or similar to a registered trademark for goods or services that are identical or similar to those your mark is registered for. This only applies when there is a likelihood that the general public could confuse the two trademarks. Third, it is identical or similar to a trademark which already has an established reputation in the UK.
Defending against infringement
There are various ways to defend yourself against trademark infringement claims. You can apply to have the registration of a trademark revoked if it has become generic (e.g. aspirin), or is over five years old and its owner has not used the trademark within that period. You can have the trademark’s registration declared invalid if it should never have been registered e.g. it does not comply with UK trademark registration law. The former negates the trademark’s validity only from the date of revocation, while the latter basically re-writes the trademark’s legal history.
Legal proceedings
If someone infringes upon your trademark, you can threaten them with legal proceedings. Under the Trademarks Act 1994, you can face significant consequences for making “groundless threats” of legal action, so consider this approach very carefully. You can threaten legal action without incurring this risk if the proceedings only relate to acts of applying the trademark to products, importing the products bearing the mark, or providing services under the mark. You can also avoid this risk if you are just notifying others that you have submitted a trademark application or registered a trademark.
Trademark crimes
It is a crime under British law to falsely state that a trademark is registered. The ‘r’ symbol is used to represent the fact that a trademark has been legally registered in the UK. You should also remember that it is a criminal offence to falsely represent products and services that a trademark is registered for e.g. by selling counterfeit versions of the product in question.
Generic trademarks
In some cases, you can register generic trademarks. However, you cannot do so if it meets one of the following three criteria.
- It is “devoid of any distinctive character.”
- It “”consist[s] exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or rendering of services, or other characteristics of the goods or services.”
- It “consist[s] exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.”
Yet if the generic trademark has acquired distinctive character through real-world use, such as in the case of “British Gas,” you can register it in the UK despite these criteria.
Domain names and trademarks
You can use trademarks to secure domain names before they go on public sale, or to relieve existing domain name registrants of this IP. However, trademarks relate to specific products and services while domain names do not, so pursuing this action can be problematic. Also domain names are intrinsically international, while trademarks are not, compounding the problem. It is wise to enlist professional aid when pursuing this course of action. Turner Little can advise you on domain name registration issues as well as Trademarks.
Registering trademarks
In order to register a trademark in the UK, you must submit an application to the UK IP Office. If your trademark represents a significant investment for your company, you may wish to enlist the aid of a specialist in this field, to ensure your business’ interests are protected. You can utilise Turner Little’s trademark registration services in order to trademark your firm’s IP successfully.
Turner Little
Turner Little was founded in 1998 and it has since become a well-established UK based professional Company Registration Agent, Registered Bank Intermediaries and Business Consultants, as well as Trust provider. You can receive our monthly newsletter by signing up using the form below.
