Trademark Law Briefing
Trademark law concerns itself with the commercial use of 'signs' (such as names, logos, badges, and so on), which designate the origin of goods and services, and the exploitation and protection of those registered trademark rights. However, the law also protects unregistered trademarks. In English law, unregistered trademarks are protected under the law of "passing off".
Things To Know About The UK Trademark Laws
- The art of search
Before you choose a trade mark for your business (e.g. choosing a domain name, or a name for a new product or service) it is usually sensible to conduct some kind of trademark search to determine whether your proposed mark might infringe another's rights. At the very least, you should search using the major search engines for examples of actual use, and search at the key trade mark registries. For instance, a UK business providing services in the EU and the US should search at the UK Intellectual Property Office, the Office for Harmonization in the Internal Market, and the US Patent and Trade Mark Office. Searches should cover the actual proposed mark and any obvious variations (e.g. of spelling).
You may infringe a registered trademark if you use in the course of trade a sign which is:
- Identical to a registered trademark in relation to goods or services which are identical to those for which is it registered; or
- Identical or similar to a registered trademark in relation to goods or services which are identical or similar to those for which it is registered where there exists a likelihood of confusion (which includes association) on the part of the public; or
- Identical or similar to a trade mark which has a reputation in the UK where the use of the sign, being without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trademark
- The best defence
There are lots of arguments and tactics you can use to defend yourself against a claim of trademark infringement.
If the trademark has become generic (e.g. linoleum, aspirin, gramophone), or if the trademark is over 5 years old and the owner of the registration hasn't actually used the trademark in the 5 years preceding the claim, you can seek to have the registration revoked. If the trademark should never have been registered, for example because it conflicts with an earlier trademark, or did not meet one of the other basic criteria for registration, you can seek to have the registration declared invalid. This is why Google refuse to allow people to 'Google' searches.
The difference between revocation and invalidity is that the former affects the validity of the mark from the date that revocation is ordered, whereas the latter invalidates the mark ab initio, in effect re-writing the mark's legal history.
- The threats trap
If you threaten someone with proceedings for infringing a registered trademark, then you risk being on the wrong end of a legal action for "groundless threats" under the Trade Marks Act 1994. Certain kinds of threat can be made without creating this risk - namely, where the threatened proceedings relate only to acts of applying the trademark to goods, importing the goods bearing the trademark, and/or supplying services under the trade mark. You can also notify others that a trademark application has been made or a mark registered without creating this risk.
This "threats" action is peculiar to UK trademark law. Because of this unusual law, you should always seek professional advice before accusing someone of infringing your trademarks.
- Uses and abuses of ® and ™
It is a criminal offence (punishable by a fine) falsely to represent that a trademark is registered, or to make a false representation as to the goods or services for which the trademark is registered. The use of the ® symbol amounts to a representation that a mark is registered; however the use of the ™ symbol probably does not.
- Applying for a trademark
You can instruct a trademark attorney or solicitor to prepare and file your trademark application, or if you prefer you may do it yourself.
Again, if the brand which will be protected by the mark represents a substantial investment, it is usually worth instructing a professional. Full details of the application procedure are posted on the website of the UK Intellectual Property Office and, for CTMs, on the website of the Office for Harmonization in the Internal Market.
- Generic trademarks
Can you register a trademark which is generic? The answer to this question is not simple.
The Trade Marks Directive does not use the word "generic". Instead there are three categories of mark which are not registerable on broadly "generic" grounds. First, trade marks which are "devoid of any distinctive character" are not registerable. Second, trademarks which "consist 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" are not registerable. Third, trade marks which "consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade" are not registerable.
- Domain name game
The system of domain name dispute resolution, embodied in ICANN's Uniform Dispute Resolution Policy and its offspring, is linked to the trademark system. Trademark rights can be used to secure domain names before they go on public sale (via "sunrise" periods) and to relieve domain name registrants of their domain names. The linkage is problematic, not least because there is a mismatch between the scope of trade mark rights and the uses of domain names. Trademarks are national rights whereas domain names (even country code domain names) are inherently international; moreover, trademark rights are specific to certain goods and/or services, whereas domain names are not. This is often known as 'Cybersquatting'.
- Trademark crimes
The offence of falsely representing that a trademark is registered is not the only trademark-related crime on the statute book. However, because of the way in which the trademark crime provisions have been drafted (in particular, a reference to "material" being involved) it is arguable you cannot commit a crime under English law by including a trademark on a website. On the other hand, it clearly could be a crime to sell counterfeit goods bearing others' trademarks via your site.
Original source: SEQLegal
The most important piece of UK legislation relating to trade mark is the Trade Marks Act 1994. Passing off is a right at common law: it has not been codified in statute.
Marking Your Property
There are two symbols commonly used to mark trademarks; they are: ® and ™. Everyone who uses a trademark symbol should know at least the following four things:
Which to use: ® or ™?
Your business can use the ™ symbol whenever it wishes to claim a trademark. You do not need to file any paperwork to receive permission to use the ™ symbol. Use of the ™ symbol can put your competition on notice that your business considers a mark to be your trademark.
The ® symbol may only be used after the authorities grants a bonefide registration certificate. The ® symbol may not be used while the trademark application is pending. Additionally, the ® symbol may only be used in connection with the goods and services listed on the registration certificate.
Why use symbols?
Even though a trademark symbol is not required, always use the correct trademark symbol with your trademark. Your competitors and copiers will be put on notice of your trademark. Then, they can respect your intellectual property. Likewise, you can prevent your customers from becoming confused by always respecting the trademarks of others, whether they use the ® or ™ symbol.
Importantly, for registered trademarks, use of the ® symbol may be necessary to claim damages and court costs if your business has to sue a competitor. If you have not properly noticed your trademark, you may not be able to obtain money damages or recover your costs.
Where do you place ® or ™ symbol?
When using your trademark, place it prominently, so people will notice it immediately. When using your trademark within a body of text, use bold, italic, UPPERCASE, or a different font. Make your trademark look different from other, surrounding words. Try to use your trademark as an adjective and not as a noun. For example, “Be hip, show style, wear NIKE® shoes”.
Setting of all trademark words with bold, italic, UPPERCASE, or a different font, so they are clearly different from surround text. Then provide a footnote that describes the trademark.
The goal is for competitors to see the symbol that marks your (correct) trademark claim.
There are usually three good ways to notify the marketplace. They are:
- Placement of the ™ or ® symbol right adjacent to the trademark, every time it is used
- Placement of ™ or ® or * (asterisk) or † or (dagger) or ‡ (double dagger) symbol right near the first use of the trademark. Then provide a footnote that describes the trademark in more detail - for example, † NIKE and the swoosh logo are trademarks registered in the US Patent and Trademark Office.
or - † NIKE and the swoosh logo. Reg. U.S. Pat. & Tm. Off.
If your trademark is not [yet] registered, you can notify the market like this - † The crown logo is a trademark of MyCompany, Inc.
Inserting ™ or ® into your documents
Your word processor has an 'insert symbol' function or 'Special Character' function in the Edit or Insert menu. These functions let you find all sorts of symbols including the ™ or ® symbol.
Why you almost never see the ℠ symbol
The ℠ symbol means “service mark”, which indicates services (rather than goods). This is, however rarely used. The ™ symbol works identically, and should be preferred for services.
Original Source: Andrew P. Lahser on howconceptual.com
- Trade Marks Act 1994 (opens a new window).
- Intellectual Property Crime: Legal Guidance - a UK Government briefing (opens a new window).
- Resources and Guidance | USPTO - The US view of trademarks (opens a new window).
- Institute of Trade Mark Attorneys (ITMA) - a UK trade body (opens a new window)
- Trade Mark Registry - trademark registration pages on the UK Patent Office website (opens a new window).
- US Trademark Registry - trademark registration pages on the US USPTO site (opens a new window).
Glossary: Advertising Standards Authority, Ambush Marketing, Brand Name, Branding, Brand Repositioning, E-Marketing, E-Privacy Directive, Logos, Marketing, Pharming, Phishing, Trademark, Trust, TrustRank