Trade Mark Information
- Use of the 'TM', 'SM' and '®' Symbols
- What are Trade Marks and Service Marks?
- What can be registered
- Why register?
- How can protecting your trade mark help your business?
- National Trade Mark Protection - UK
- Name watching
- Protection abroad
Under the laws governing trade marks in most countries, anyone who claims rights in a trade mark can use the TM (Trade Mark) designation with the mark to alert the public to the claim. It is not necessary to have a registration, or even a pending application to use the TM or SM symbol. The official registration symbol ® can only be used when the mark is actually registered. Please note that all symbols must be omitted from the mark before the application is submitted, the symbols are not considered part of the mark.
A Trade Mark (or "Brand Name" as it is sometimes called) is a means of identification used by a person or company in the course of trade to distinguish his products from those of other traders. A Trade Mark may be a word, a logo, a monogram, a shape, letters, numerals, a signature, or any combination of these. A Trade Mark, to perform its function effectively, must be distinctive, although it may be used in combination with a shape or style.
A Service Mark performs a similar function to a Trade Mark for those businesses concerned not with the manufacture and supply of goods, but with the performing of services to industry or to the public, for example banks, building societies, accountants, surveyors, estate agents, dry cleaners, restaurants, motor repairers, etc.
Since 1876 there has been legislation in the UK enabling Trade Marks to be registered. Trade Marks have enjoyed extensive protection in the Courts under the Trade Marks Act, but it was only as recently as October 1986 that the Trade Marks Act was extended to include Service marks.
In addition to this statutory protection, there has for centuries been protection in Common Law under the tort of 'Passing Off'. If a trader uses a name or style which resembles that of a rival and it causes confusion, the latter will be able to bring an action and if successful, obtain an injunction to prevent further confusion.
However, a 'Passing Off' action does have some limitations and the only way in which you can establish clear-cut rights is to register a Trade Mark or Service Mark.
Registration gives a statutory monopoly in the use of the Trade Mark in relation to the goods or services to which it is registered.
The owner has the right to sue in the courts against any infringement or unauthorised use of the mark.
A Trade Mark can only be registered in respect of goods which the applicant is selling or intends to sell, or in respect of services which the applicant is supplying or intends to supply. To be registrable, a Trade Mark must be distinctive. A Trade Mark must not be:-
- A. Descriptive of the nature or purpose of the goods (services) for which registration is sought
- B. A surname
- C. A geographical place name
- D. Laudatory (contains praise)
- E. Merely two initials, eg. XL
- F. A common geometrical figure on its own
G. Not identical or similar to an existing registered mark in respect of similar goods or services H. Deceptive in that it suggests that the goods possess characteristics which they do not have I. If it is contrary to law or morality or is of scandalous design
When a Trade Mark has been in use for over 5 years it may be possible to obtain a registration even though it may prominently include any of the disqualifications set out above.
When a Trade Mark is being considered, it is most important that proper searches should be made to ensure that the proposed Mark does not conflict with an existing pending, registered or recently lapsed Mark.
An application for a Trade Mark must specify the goods or services for which registration is sought and must be in respect of a specific class. Goods are divided into thirty-four different classes, and services into eleven different classes, according to their nature of business.
An application can include goods and / or services proper to more than one class. The application must include copies of the Mark for which registration is sought.
An application will be considered by the Trade Marks Registry and if accepted will be advertised in the 'Trade Marks Journal'. It is then open to opposition by any similar Trade Mark owner for a period of three months.
If an opposition is not made, or if an opposition is unsuccessful, the Mark will be entered onto the Trade Marks Register.
The registration of a Trade Mark continues for ten years from the date of application, and it may be renewed for subsequent periods of ten years on payment of a renewal fee.
It is important that Trade Marks and Service Marks should be registered wherever possible. Not only does registration afford a simpler remedy against imitators than through Passing Off, but rights will be acquired as of the date of application and they will generally cover the whole of the UK. Registration acts as a very valuable deterrent to those who are seeking new Marks by preventing them from adopting identical or confusingly similar Marks.
This factor should not be underestimated - The Register of Trade Marks and Service Marks is the single most useful reference point when clearing new Marks for possible use, and the registration of the Mark therefore puts on public record a company's interest in the Mark.
- It can protect your investment in product development
- It can protect your reputation
- It can generate licence revenue for you
All our searches are conducted on the UK and EU Trade Mark Registers. We also undertake searches in all classes for which similar marks may be an obstacle to an application for registration of a trade mark. Our basic search fees are £80 plus VAT and take around 10 working days to complete. Please use form TM1.
However if you decide that you will actually want to register the Mark then we need to complete an acceptance report which will advise if the Mark is likely be accepted for registration. In this case please use form TM2 and not TM1. The cost for the search and acceptance report is £150 + VAT.
In conjunction with the above searches, we are also able to carry out limited common law and trade searches which may be used but which have not been registered as trade marks.
If a proposed trade mark is available for use and is distinctive enough to be registered it can then be applied for at the UK Trade Mark Office. As trade mark agents we will see your application through the complex procedures of the Trade Mark Office and obtain registration within 7-8 months, presuming no opposition is raised against the application by a third party. Our fees for placing an application on file to register a UK trade mark, publishing the trade mark, registering the trade mark are £375 + VAT (one class), additional classes are charged at £100 + VAT. Please note that if any subsequent work is needed to overcome objections raised by third parties then additional fees will be payable which are difficult to predict in advance.
Since 1876 the UK Trade Mark Office has been registering trade marks, you can therefore imagine there are millions of marks either pending, registered or recently lapsed that could have an effect on a particular style or name you wish to use. It is therefore important that an availability search is firstly completed before submitting the proposed mark to the UK Trade Marks Office. In order to carry out a search we require full details of the mark to be searched, with a copy of any figurative or decorative logo if included, together with details of the precise goods/services for which a mark is to be used or registered, so that the correct class(es) according to the Nice Classification Guide can be searched.
After a Mark has been registered you may wish to subscribe to our Name Watching service - whereby we undertake to monitor your Trade Mark in the UK and/or abroad to ensure that no one tries to copy or imitate your Mark. The service will warn you immediately of another similar Trade Mark application being filed so that we can raise an objection to that Mark in sufficient time to prevent a registration. We can monitor every class of Mark in virtually every country at a very reasonable cost. Form TM4 explains this service and it should be considered after your Mark is registered.
On the 1st April 1996, a new Community Trade Mark office opened for the filing of applications for Community Trade Mark registrations.
The opportunity of having a single registration to cover the whole of the European Union gives advantages in terms of both management and cost savings over individual country Registrations. Even for those companies who may have a need for protection in only a part of the European Union, the Community Trade Mark represents a financially attractive alternative to national registrations as the cost of a Community Trade Mark may be no more that the cost of 4 Registrations in different countries.