Trade mark registration

Registration

Registration of a trade mark confers on the owner the right to the exclusive use, in the territory covered by the registration, of the mark in connection with the goods or services for which it is registered. This means that the owner can sue for trade mark infringement any person who uses (e.g. by putting the sign on goods or packaging, importing goods under the sign, and using the sign in advertising) an identical or similar mark in the course of trade in connection with identical or similar goods or services without authorisation (in some cases, the owner must also show that the use has caused or is likely to cause confusion).

If the mark has a certain level of reputation in the UK, there is a wider right to prevent others from using the same or a similar sign for goods or services (whether similar or not), where that use, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

The owner can also authorise or license others to use the mark.

Is registration required?

Registration of trade marks is voluntary but advisable. A registered trade mark is:

• A valuable commercial asset
• Commercially exploitable
• Relatively easy to protect and enforce
• A deterrent to infringers
• Renewable indefinitely

On the other hand, in the UK for example, an owner of an unregistered trade mark must rely on a passing off action to prevent infringement of their mark. Passing off actions are, however, time-consuming and expensive. And often difficult. To succeed in such an action, the owner must produce evidence of their ownership of goodwill or reputation in the mark, and evidence that the unauthorised use of their mark amounts to a misrepresentation which is causing, or is likely to cause, damage. Protection of a new, unregistered brand name or mark may be impossible since it may not have attracted sufficient goodwill to support an action for passing off. Gathering evidence to demonstrate that there is a misrepresentation, usually in the form of evidence of confusion (or a likelihood of confusion) is labour-intensive and costly, particularly where it is necessary to involve market research companies and experts because survey evidence is the only means of showing that there is confusion.

What can be registered?

A sign which can be represented sufficiently and which is capable of distinguishing the goods or services of one business from those of another can be registered as a trade mark as long as there are no 'absolute' or 'relative' grounds for refusal.

If a mark is not already in use, any applicant to register it as a UK mark must have a good faith intention to use it. There is no such requirement in relation to EUTM applications.

It is possible to register a series of UK marks under a single application, as long as each mark in the series differs only as to matters of a non-distinctive character which do not affect the identity of the trade mark. This means that the marks must look, sound and mean the same, and any differences must be minor. The EUTM system does not provide for series marks.

When to apply

The trade mark system operates on a 'first come, first served' basis. Given that there is no need to have started using the mark, this means that the best time to apply for registration is often at the development stage of a new product or service. This ensures not only that the application is well on its way to registration by the time the product/service is on the market, but also that the applicant will have grounds to formally oppose any subsequent application by a third party to register the same or a similar mark.

Another good reason for applying at an early stage is that existing registrations, and pending applications, relating to similar trade mark rights will be revealed during any searches of the trade marks register. This information will help to prevent accidental or coincidental adoption of any mark that is the same as, or similar to one that is already being used by another trader for the same, or similar, products or services (or, even worse, has been registered or applied for by someone else who therefore has priority). If this happens, the earlier owner or applicant can block the later application. The later applicant will have wasted its application fee, as well as having to choose and apply for a different mark at a late stage in the brand development process.

Division

A multi-class UK application or registration can be divided not only as the result of a partial transfer, but also at the request of the applicant or owner. This might be done for strategic reasons to get the uncontentious classes through sooner. For divided registrations, any registered interests, such as licences and security interests, may now apply to all newly-created divisional registrations. Division is limited to those parts of a registration that are not the subject of any dispute.

An application for division in the UK is made on Form TM12 for a fee.

A multi-class EUTM application or registration can be divided at the request of the applicant or owner.

Comparable trade marks

From 1 January 2021, the IPO will place on the UK trade marks register a new UK registration for each EUTM that was on the register at the end of the Brexit transition period, with no burden on the proprietor to pay any fee, make any application or do any administration.

These new registered marks are called comparable marks (EU). Similarly, a comparable mark (IR) will be placed on the UK register for every international registered mark protected in the EU.

The proprietor of an existing EUTM or international mark may serve notice on the UK trade marks registrar at any time that they wish to opt out of owning the corresponding comparable mark (with retrospective effect), provided the comparable mark has not been used in the UK nor made the subject of any transactions.