The Basics of Intellectual Property (IP)
Over the course of the next few blogs, we shall be exploring the different forms of intellectual property available in the UK, with each blog focusing on a different type of IP, namely: trade marks, copyright, patents and design rights. This first blog focuses on trade marks.
What are trademarks and how do they work?
A trade mark is essentially a sign used to identify and distinguish the goods, services, intellectual property, or branding of one business from that of another, and can be registered or unregistered.
The types of mark that can be protected include words (eg. Tesco); designs (eg. the Apple logo); the shape of goods or their packaging (eg. the Coca Cola bottle); internet domain names (eg. Confuse.com); and slogans (eg. just do it).
Why register a trade mark?
Registration of trade marks is voluntary but strongly advisable as it gives the owner the exclusive right to use the mark in connection with the goods or services in the country in which they operate for renewable periods of 10 years. Therefore these rights can potentially last forever.
In order to be registered, a trade mark must be capable of graphic representation, and be distinctive and not overly descriptive. It must also not clash with any earlier registered marks.
The registered owner can authorise or licence others to use the trade mark and can sue any third party for trade mark infringement if there is unauthorised use of an identical or similar mark in connection with identical or similar goods or services, or where those goods or services are likely to cause confusion.
Conversely, if a mark is unregistered, the owner must rely on a passing off action to prevent infringement of the mark. These types of lawsuits are notoriously time consuming, expensive and difficult to prove.
How do I register a trade mark?
In order to register a trade mark, the mark must either be in use or there must be a genuine intention to use it, usually within the first 5 years of registration.
The stages are as follows:
- Searches: When making a trade mark application, searches should always be undertaken, to ensure that the mark is not already registered or in use for the same or similar products or services.
- Application: Subject to the results of the search, the application will need to be prepared and lodged including details of the proposed trade mark, and setting out the classes of goods or services which it is intended to cover.
- Examination: Once an application is submitted there is an examination process to ensure that it meets for registerability. If any objections are raised by the examiner, these must be addressed in order for the mark to advance to the next stage of the process.
- Publication: Once the application has been accepted, it is published in a weekly Trade Mark Journal. This is then advertised for 2 months, during which interested parties may object to the registration of the proposed mark in relation to the goods or services listed in the application. The journal entry puts people on notice that the proposed mark is being applied for, and if parties already have similar or identical marks registered or in use, then this is their opportunity to object and prevent the application from proceeding.
- Registration: If there is no opposition, or if an opposition is lost, the mark will proceed to registration and a certificate of registration will be issued. Registration lasts for 10 years and can be renewed potentially forever, subject to the payment of renewal fees.