Choosing a Trade Mark

Firstly you need to decide what sort of Trade Mark you want to register, basically a Trade Mark is anything that is unique to your business and can be as simple as, a word, logo, colour, shape, a combination of letters or numbers, a form of packaging, or even a personal or distinctive name.

• The trade mark must not describe your product or service directly e.g. "great designer" or "chocolate biscuit".
• The trade mark must not mislead people about the nature of your goods or services.
  
• The trade mark must not conflict with one already registered by someone else.

 Meeting the legal requirements

You need to be sure your trade mark can be registered and that it meets the legal definition -

"a trade mark means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings"

 Which class of goods or services?

You will need to decide in which class of goods or service you wish to register your trade .There are 45 in all, and a selection of these are shown below:

Class 23: Yarns and threads, for textile use.

Class 24: Textiles and textile goods, not included in other classes; bed and table covers.

Class 25: Clothing, footwear, headgear.

Class 26: Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles.

 Trade Mark Searches

Before adopting a trademark you should conduct searches to establish that no-one has earlier and better rights to your trade mark or a similar trade mark for your goods and services of interest.

You need to search the Trade Mark Register to determine whether or not somebody else has already registered or applied to register the same or similar trade mark for the goods and services that are of interest to you.

You also need to carry out searches to determine that no-one else has used the same or similar trade mark for your goods and services of interest but not registered it. A used but unregistered trade mark can be used to prevent you from using and registering your own trademark.

A trade mark attorney should be able to tell you whether your trade mark is unique and can carry out these searches for you. You can conduct your own search of the UK Register of registered trade marks which is held at the Trade Marks Office in Newport. Please note however that such a search will not disclose any trade marks which are in use but are not registered and which may prevent you adopting your trade mark.

 Filing

Once your trade mark has been accepted, it will be published in the Trade Marks Journal. There follows a three month period during which oppositions may be filed.

If there are no oppositions, your trade mark is formally registered and you will receive a certificate to this effect. Your registration will last for ten years.

If there are oppositions or problems with your application, these need to be addressed. Professional help is especially important here, but you can still proceed on your own.

If the problems cannot easily be resolved, your case will be referred to a Hearing Officer, a professional within the Patent Office who acts on behalf of the Registrar. His decision is final but is still subject to appeal to the High Court or "Appointed Person" being the appointee of the Lord Chancellor.

 Passing Off

Passing-off occurs when somebody represents their goods and services as the goods and services of somebody else. No-one is entitled to steal anothers trade by deceit.

Passing-off can occur by somebody adopting the same or similar trademark as yours, the same or similar appearance of the product or services as yours or by implying to the public that their product and service is somehow or other connected with yours when it is not.

Passing-off, if established, can be the subject of injunctions awarded by the courts and the party guilty of passing-off can be ordered to pay you damages and costs.

If you suspect that a competitor is passing-off their products or services as yours it is essential that you seek advice immediately. Delay of even a few days can be fatal to your chances of preventing such activities.

 Infringement of Trade Marks

Infringement occurs when someone else uses a trademark which is the same as or similar to your registered trademark for the same or similar goods and/or services.

Infringement can be restrained by court order. The courts can also award damages and costs to the owner of the registered trademark which is infringed.

If you suspect that your registered trademark is being infringed then action needs to be taken promptly. Delays of days or weeks can effect your chances of obtaining the appropriate relief.

If you require help or advice on infringement please contact a member of The Institute of Trade Mark Attorneys.

 Community Trade Marks

Since April 1996, there has been a European Community Trade Mark, issued through OHIM - the Office for the Harmonisation in the Internal Market, based in Alicante, Spain.

One registration gives trade mark protection in all 15 Member States of the European Union. This system means:

Less to pay - one registration and one application for renewal
Less paperwork - simultaneous registration throughout the EU
Lower Attorney's costs - working through OHIM reduces the number of foreign associates involved
Faster results - A single application can save time over multiple applications
Easier to apply for - direct to OHIM or through the UK Patent Office

The registration gives trade mark rights throughout the EU so that if it is acceptable to OHIM then the mark is protected in all countries. OHIM checks its own register for confusingly similar marks; other Member States may do likewise. If the mark is unacceptable in one country it will be refused throughout the EU.

UK Trade Mark Attorneys are encouraging overseas companies to route their applications through UK firms. As English is one of the five languages accepted by OHIM, non-EU companies with long established practices of dealing in English feel more at ease applying through UK based firms.

 International Registrations

Since April 1996 companies in the UK have been able to register their trade marks on a wider international scale through a scheme known as the Madrid Protocol.

Under the Protocol, when an applicant has registered (or filed an application to register) a mark in their own country, they can apply for an International Trade Mark to be registered with WIPO - the World International Property Organisation in Geneva - for all or some of the countries who have signed up to the Protocol.

Once WIPO is satisfied with your application, it will enter the mark on the International Register and notify the countries specified in your application. WIPO will also advertise the mark in the International Gazette. Each country then has up to 18 months to object.

If one or more countries object and you either do not argue your case or you lose the argument, your mark will not be accepted in those countries. However, it may be acceptable in other countries and will be recorded accordingly on the International Register.

The advantages of registering through the Protocol are:

• Ease of administration - there is no need to work through trade mark agents in every
• Protocol country unless you face oppositions or objections to the application in that country
• Cost savings - through keeping professional fees to a minimum
  Flexibility - in that you can register in one or more Protocol countries.

Further information can be obtained by contacting:

ITMA Office, Canterbury House, 2-6 Sydenham Rd, Croydon, Surrey, CRO 9XE  Tel: 020 8686 2052 Fax: 020 8680 5723

By Martin Huckle

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