Contents
1. Summary
A trade mark is a sign or indicator which can distinguish your goods and services from those of another. Trade marks are very valuable assets. This section looks at registered and unregistered trade marks, as well as domain names.
2. Trade Marks
A trade mark is a sign or indicator which can distinguish your goods and services from those of another. Trade marks can be registered as indicated by the symbol ®, or unregistered, usually indicated by the symbol ™.
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3. Registered Trade Marks
A registered trade mark is a very valuable asset and allows you to control who can use it e.g. you can license your trade marks as part of a franchise.
Registered trade marks can be:
- word marks, such as “Kodak”
- logos, such as the Nike “swoosh”
- shape marks, such as the Coca-Cola bottle
- or any other mark, that is capable of distinguishing the goods for which it is registered and capable of being represented graphically, for example
- a slogan - L’Oreal’s “Because you’re worth it”
- sound - Intel and the three-second chord sequence used with the Pentium processor
- or even a smell
Before you start using a trade mark (and before you spend money on applying it to a website, leaflets, etc.), make sure you check that your chosen mark or name is not already registered to someone else.
A thorough trade mark search needs to be carried out by a professional, although you can do a quick trade mark search online as a first step.
Many other countries’ trade mark registries can be found online.
Another powerful tool is eSearch plus at the Office for Harmonization in the Internal Market (OAMI) website. This allows you to search for both European Union trade marks and designs at the same time.
A registered trade mark can last forever if it is renewed (usually every 10 years). It can be revoked if it is no longer in use.
How trade marks are registered
Trade marks are registered in particular classes for particular goods and services. The Nice Classification system classifies goods and services under 45 broad headings. You will need to identify the classes and the particular goods and/or services for which you want to register the trade mark.
If your trade mark falls into more than one class, further fees are payable.
More information about the Classification system can be found on the Intellectual Property Office (IPO) website.
Where to use trade mark protection
You can use registered trade marks to protect your business name or logo, as well as the names and logos of your products or services.
You will need to register your trade marks according to the markets you operate in:
- in the UK alone, see the IPO website
- for the European Union, including the UK – see the OAMI website
- in separate foreign jurisdictions – see the IP Office or Trade Marks Registry for the country concerned
- internationally via the Madrid Protocol – see the World Intellectual Property Organization (WIPO) website
4. Domain Names
It may also be possible to register your domain name as a trade mark.
Domain names are a vital, but often overlooked, business tool. Obtaining the best domain name for your business can be crucial.
They are regulated separately from trade marks and company names.
Registration of a domain name does not confer any trade mark rights.
Domain names are registered through one of the many domain name registries and are registered on a first-come, first-served basis.
Be aware of “cybersquatting” where a third party registers a domain name corresponding to a known trade mark or business name in bad faith and where they have no right to do so.
Information about preventing cybersquatting.
5. Unregistered Trade Marks
In some countries, particularly ‘common law’ countries such as the UK, there is some protection for trade marks, even if they are not registered.
However, unregistered trade marks have far less protection than registered trade marks.
For example, in the UK an unregistered trade mark may be protected by the law of “Passing Off”. This prevents a third party from “passing off” their goods as yours.
To succeed in a Passing Off action, you may need to show that you have a reputation in the trade mark (through extensive, and often expensive, customer surveys) and that the actions of the third party involve some degree of damage to you.
It is much easier and cheaper to protect your trade marks by registering them.
For professional help with trade marks, go to The Institute of Trade Mark Attorneys website