What is a trade mark?

A trade mark is a mark, brand or sign used by traders to differentiate their goods from those of other traders. Trademarks can be registered or unregistered.

Under the Trade Marks Act 1994, any sign which can be represented graphically and which is capable of distinguishing the goods or services of one business from those of another is in principle registrable as a trademark (subject to the absolute and relative grounds for refusal (see below)). Examples of trademarks are: labels, logos, names (including domain names), packaging, smells, sounds, business style and business presentation. Therefore, a trade mark can extend beyond the name of a product or its logo to the colour and shape of the goods. For example, Marmite jar, Coca Cola bottle and colour combinations for drug capsules.

The name of a person with a possible endorsement right can also be a trademark. However, the name and the image of an individual has to be distinctly linked with the origin of the goods or services in question. For example, Tiger Woods with golf equipment. Therefore, the application to register the image of Diana as a trade mark in connection with various goods such as tea towels failed, likewise so did the application to register Elvis Presley as a trade mark on beauty products.

In relation to geographical names, it has recently been held that, in general, they cannot be registered as trademarks. However, where a geographical name has come through use to identify the product as being made by a particular undertaking, then the geographical name gains a new significance and can be registered e.g. Waterford crystal.

Internet domain names (for example: www.thelegalstop.co.uk ) can be registered as a trademark provided they are distinctive. Further, it is possible for infringement to occur where the domain address used utilises an already established trademark.

Exploitation of trade marks

There are various ways in which a trademark can be exploited:

• A business may sell its trade mark, for example if it wishes to withdraw from a specific product market.

• A business may wish to spread the financial return through licensing. Competition law may apply to trademark licensing to control the extent to which a licence holder can be protected from competition from the licensor or its other licence holders.

UK Registration of trademarks

Application for registration is made to The Intellectual Property Office (IPO). The application must be accompanied by payment of a fee. Renewal is necessary every 10 years, when a further fee will be required. Alternatively, an application may be made at the European Trade Marks Office.

An application is filed for goods or services in one or more of the relevant classes of the International Classification. Each class represents a certain type of goods or services. There are 45 different classes for goods and services. Often, it would be advantageous to file in a number of different classes in order to cover the variety of goods or services in which the business proposes to deal. The classes tend to be rather broad and it will normally be necessary to limit the application to specified goods within that class.

Steps to be taken for registration

1. File application. You should receive a receipt within 1 week.
2. Examination and search by the Trade Mark Registry. You should receive a report within 4 weeks, and this may contain the Intellectual Property Office’s objections. If this is the case, you may wish to respond.
3. Advertisement of the application in the Trade Mark Journal.
4. Opposition to the trademark would need to be made within 2 months, with the possibility of a 1 month extension.Registration if no opposition is made or if opposition proceedings are decided in favour of the applicant.
5. Date of registration is back-dated for priority purposes to the date of first filing.If the examiner rejects the application to register the trademark, there is a right of appeal to the High Court.

Grounds for refusal of registration

There are 2 types of grounds on which an application to register a trademark can be refused. These are absolute grounds and relative grounds.

Absolute grounds

Absolute grounds apply where the sign is, for example, purely descriptive, not distinctive and should otherwise remain available in the public domain. The trademark would be refused registration on the following grounds:

1. The trade mark lacks distinctive character. That is, if the mark applied for merely describes the goods and services applied for. For example ‘Froot Loops’ was refused on the basis that the name described the product.
2. The trade mark consists exclusively of signs or indications which are used to describe a particular feature of the goods. The following categories would therefore be considered descriptive:

• Kind. For example, personal (for computers).
• Quality. For example, best.
• Intended purpose.
• Value. For example, worth their weight in gold.
• Geographical origin.
• Time of production or of rendering of services. For example, 24 hour service, eight till late.
• Other characteristics of the relevant goods or services.
• Phonetics: misspellings of words that would otherwise be refused will require evidence that the trademark is distinctive.

3. The trademark consists of signs or indications which are customary in the current language or the established practices of the trade.

A trade mark should not be refused registration in relation to any of the above grounds, if, before the date of application to register, it has in fact acquired a distinctive character as a result of the use made of it by the applicant.

4. The trademark consists exclusively of the shape if the shape: results from the nature of the goods themselves; or is necessary to obtain a technical result; or gives substantial value to the goods.

Goods or packaging created in a specific shape may be registered.

5. The trademark is contrary to public policy or accepted principles and morality.

6. The trademark is likely to mislead or deceive the public (for instance, as to the nature, quality or geographical origin of the goods or service). For example, an application to register ‘Swiss Miss’, the name of a chocolate, failed on the ground that it was not made in Switzerland and was not in anyway connected with Switzerland.

7. The trade mark is prohibited under UK or EC law.

8. The trade mark is a specially protected emblem e.g. the Olympic symbol.

9. The application is made in bad faith.

Relative grounds

Relative grounds for refusal are concerned with protecting the prior conflicting rights and interests of other trademark owners and the interest of the public in not having similar marks used in relation to the same or similar goods or services. The earlier mark will be protected whether they are registered or not and different rules apply to each situation.

Where the earlier trade mark is registered

An application will be refused where there already exists an identical or similar trademark that relates to identical or similar goods and services AND where members of the public are likely to be confused. An application may also be refused on the grounds that, although the goods or services are not similar, the trademark has an established reputation and an applicant for a similar or identical trademark would be taking unfair advantage of, or causing detriment to, that reputation.

Where the earlier trade mark is not registered

Even where the earlier trademark is not registered, registration may be refused if it benefits from the reputation of that existing trademark.

Infringement of a trademark

Infringement occurs when the trademark is ‘used’ by a person or business other than the owner without their agreement or where the use is based on the above absolute and relative grounds. Therefore, an applicant who tries to register such a trade mark will not only be refused registration but through its use may be sued for infringement. ‘Use’ of a trade mark includes: putting it on goods or packaging; offering, marketing or stocking goods or services under the mark; importing or exporting under the mark; putting it on business papers or advertising material.

Infringement can also be non-visual such as ‘smell’ or ‘sound’ trademarks.

Suppliers of the infringing material, such as printers, may be joined in proceedings. For such an action to succeed, the supplier must have known or have reason to believe that use of the mark was not authorised by the owner.

International Implications

There are 3 ways of registering trademarks. All applications can be made through the UK Intellectual Property Office (IPO).

1. Application in the UK for a UK trade mark registration will protect the trademark in the UK ONLY. Conversely, trademarks registered outside the UK will not be protected by that registration in the UK, in the absence of any international agreements to the contrary.Application for a Community trade mark (CTM). This is a unitary right applying in the EU.
2. Application for a CMT may be made either at the IPO or directly to the Office for the Harmonisation of the Internal Market based in Spain. There is an additional handling charge for CTM applications dealt with by the IPO. Registration will extend to all EU countries and is cheaper than applying for national rights in every country. It is important to note that CTM regulations do not replace national trademark laws, but offer an alternative system of registration. Registration is renewable every 10 years. The main disadvantage of a CTM is that if it is successfully opposed in one of the EU countries, the application will fail in all. The only way around this will then be to convert it to individual trademark applications in each country, which means additional fees to be paid, on top of the CTM registration fees already paid.
3. Application for an international trademark registration, under the Madrid Agreement. It introduces a single international application, which permits the registration of a mark in more than one country, as if the application was made to each individual country.

An application can be made by an owner of a trade mark (application or registration) in one of the member countries of the Madrid Protocol, who is also one of the following:

• a national of a member country of the Protocol;
• a resident of a member country of the Protocol; or
• a person or organisation with business premises (legally, ‘a real and effective industrial or commercial establishment’) in one of the member countries of the Protocol.

Because the UK is a member of only the Madrid Protocol (and not the Madrid Agreement), you can protect your mark only in countries which are also members of the Protocol.

The application is made to the IPO, who then present the application to the International Bureau of the World Intellectual Property Office (WIPO) in Geneva, which in turn notifies each designated Contracting Party. Each notified country has between 12 to 18 months to oppose registration, after which registration will automatically take effect, and the mark will be protected as if the mark had been registered as a national trade mark (Madrid Protocol, Art.4(1)(a)). The initial duration is for 10 years, renewable for 10 years thereafter.

What should I do if I believe that a domain name which I have registered as a trademark has been infringed?

Nominet UK is the Registry for .uk Internet domain names, and provides a dispute resolution service for .uk domain names.

The majority of disputes relating to domain names are brought under Uniform Dispute Resolution Policy (UDRP). The UDRP is used widely to deal with what is known as cybersquatting (deliberate, bad faith, abusive registration of domain names in violation of others’ rights – particularly trademarks). The complaints are usually brought by the holder of a registered trademark which is identical or very similar to the domain name in question. Generally the complainant must prove the following to succeed in a complaint:

• that the domain name is identical or confusingly similar to a trademark in which the complainant has rights;t
• he respondent holder has no rights or legitimate interests in respect of the domain name; and
• the domain name has been registered and is being used in bad faith.

Under the policy, complaints are examined by independent panels and if the panel concludes that the complaint satisfies the requirements specified in the policy, it directs that the domain name should be cancelled or transferred to the complainant. If not, the complaint is rejected.

Remedies

There are various remedies available to the owner of a trademark where a trademark right has been infringed. Sometimes, commercial advantage can be gained by the owner on selling or licensing the trademark to the infringer. Where such agreement between the parties is not possible, the following remedies are typically available:

• Injunction (a restraining order to immediately stop the infringing act).
• Damages (a monetary claim for financial compensation).
• Account of profits (this allows the injured party to claim the profits made by the party who is in breach).
• Delivery up and destruction (the right to both seize goods and have handed over the infringing material or goods).
• A declaration that the trade mark is valid and has been infringed.
• Criminal penalties (enforcement being carried out by the Office of Fair Trading with the maximum penalties being 10 years imprisonment and/or a fine).

The usual way to begin would be for solicitors to draft a letter on behalf of the client demanding an undertaking that infringement cease immediately, threatening legal action, usually by way of injunction, and claiming damages or account of profits. However, such a letter should be carefully drafted as the law does provide that where the threat of litigation is groundless, the aggrieved person may be able to bring a civil action for damages on the basis of the groundless threat. A threat would be groundless where the acts concerned would not in fact be an infringement of a valid right.