Trademark protection is vital to ensure your brand remains distinguished from your competitors and is clearly recognisable in the market. Our expert team answers some key questions around trademarks, how to protect them, and what to do if you have concerns someone else is using your trademark.
What is a trademark?
A trademark is a type of intellectual property consisting of a recognisable sign that identifies your goods or services. They are used to distinguish your goods or services from competitors in the market and can consist of words, phrases, numbers, designs, logos, colours or sounds. Trademarks are a valuable commercial asset that can be commercially exploited and will act as a deterrent to potential infringers. Trademark protection is an important way to ensure your competitors cannot infringe on your marks.
Who is the owner of a trademark?
A trademark owner can be one or more individuals, a company, partnership or any legal entity and it can be assigned from one legal entity to another. Your trademark does not need to match or incorporate your company name. You or your business can have different brands and trademarks.
What to do if someone is using your trademark?
If someone else starts using an identical or similar sign for identical or similar goods or services, you can take formal action against them to enforce your trademarks and request them to stop.
If you have a registered trademark in the UK, you are protected from the date of filing the trademark application. You can pursue your opponent for trademark infringement as soon as the trademark application process is complete, and the trademark is placed on the register.
If your trademark is not registered, you may be able to pursue your opponent for passing off. Passing off is an action at common law that protects the goodwill of a trader from misrepresentation. Passing off actions are more time consuming than infringement proceedings in relation to registered trademarks. The owner needs to provide evidence of their ownership and goodwill in the mark and evidence that misrepresentation is taking place by the opponent which is causing, or likely to cause, damage.
What is the difference between a logo and a trademark?
A logo can be a trademark if it is used to mark certain goods or services and in order to distinguish these goods or services from your competitors. You can register your logo as a trademark if it fulfils certain requirements. However, trademarks do not need to be logos, they can also consist of words or phrases, colours or sounds.
For example, Cadbury own the mark for the colour purple in relation to the packaging for their chocolate bar. Similarly, Heinz own the mark for the colour turquoise on their packaging. Farrow and Ball have registered trademarks for their paint names, including 'Tunsgate Green' and 'Drawing Room Brown', which means that no other paint companies can use these names for their paints.
What cannot be considered a trademark?
If you want to register a trademark, it needs to fulfil certain requirements. For instance, it must be distinctive for the goods or services it is used for, and it cannot be descriptive. For example, a trademark cannot consist exclusively of a characteristic which results from the nature of the goods, or which is necessary to obtain a technical result. It also cannot designate the quality, value, quantity, intended purpose, geographical origin or time of production of goods or rendering services. In addition, it cannot consist exclusively of signs or indications which have become customary in the current language or in the established practices of the trade. Trademarks will not be registered if they are deceptive, against public policy or scandalous in some way.
How do you avoid infringing on a trademark?
You should undertake a thorough research into the goods and services in your target market and check what brands are already out there. The more distinct your marks are from those of your competitors, the less likely there could be an infringement. You will want to avoid any confusion in the market as to the origin of your sign and you want to avoid a situation whereby consumers confuse your goods or services with those of your competitors.
How to make sure something isn't trademarked?
You cannot stop other individuals or businesses from registering their own trademarks. If you launch a new product or service line, we recommend you register your new trademarks before the marks have been promoted or the goods or services been made public or put on the market, so that your competitors have no opportunity to copy you and beat you to it.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.