What is a registered trademark? – Intellectual property


UK: What is a registered trademark?

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A trademark is a sign that serves to distinguish the goods or services of one trader from those of another. Trademark registration gives its owner the exclusive right to use the mark in connection with specified goods or services. A brand can be a very valuable asset to a business.

Trademarks are an essential part of conducting business. Businesses can use trademarks to develop their own “brand image”, allowing consumers to identify the source of goods and services of interest to them.

What brands can I protect?

Usually trademarks are words, numbers, graphic designs or a combination thereof. However, it is also possible that trademarks consist of the shape of the goods or their packaging, colors or even sounds (eg advertising jingles). Whatever its nature, to be registrable, a mark must generally be distinctive and not descriptive. For example, it is difficult to register only words of praise, common geographical names, common surnames or unique colors, at least until these can be shown to have become distinctive to products/services by use.

What type of protection is available?

Whenever possible, companies are advised to register their trademarks. Generally, a trademark registration is infringed by the unauthorized use of an identical or similar trademark by a person in the course of business in connection with goods or services identical or similar to those for which the trademark is registered. . To some extent, unregistered marks may be protected by other laws (eg in the UK the Misleading Marketing Act). However, rights in these unregistered marks are more difficult to enforce due to the need to show that the public is likely to be deceived by the other party’s use of the mark. On the other hand, the first user of a registered mark has an absolute monopoly on its use in commerce.

It is up to the holder to assert his rights on his mark (registered or not).

How do I register my trademark?

In the UK, the official body responsible for the official examination and registration of trade marks is the Trade Marks Registry, which is part of the Patent Office, a government body. To seek registration of a mark, an application is filed with the Registry in the prescribed form, identifying the goods and services for which the applicant wishes to register the mark. The registry then examines the request to assess whether it complies with the applicable law. In particular, the Register examines whether the mark is sufficiently distinctive and whether it may conflict with earlier trade mark applications or registrations having effect in the UK.

In order to decide on this last point, the registry carries out its own search in the database. If objections are raised at this stage, the applicant has the possibility to overcome them, for example by argumentation or modification of the list of goods/services. If and when the request is accepted, it is published and others can object to it. If there is no opposition (or if an opposition is successfully overcome), the mark is registered.

How long does a registration take?

Unlike other intellectual property rights, trademark registrations can remain in effect indefinitely, subject to the payment of renewal fees. In the UK, registrations initially last for 10 years and are renewable every ten years thereafter. Registered marks that remain unused for five years risk being removed from the register.

Other countries

The protection afforded by a UK trade mark registration only covers acts performed on UK territory. Other countries have their own national trademark law systems based on similar principles, although the details of law and practice vary considerably. There are also a number of international systems through which it is possible to obtain trademark protection in several countries at once. These include the European Union Trademark (EUTM) and the Madrid Protocol. For more information, please consult our information note entitled “Protection of trademarks abroad”.

Take precautions

Although the UK has no mandatory marking requirements, it is conventional to identify marks by the use of the symbol “. This may be used alongside any mark on which the user believes have exclusive rights. If a trademark is registered, it is recommended to be used with the ® symbol. These symbols inform others of the owner’s rights. Owners are also advised to keep records of their use of trademarks by disputes with third parties Of course, trademark owners must be vigilant about any misuse of their trademarks.

Originally published on September 06, 2021

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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