Trade Marks

27 May 2010  Revised 5 April 2017

A trade mark is a sign capable of distinguishing the goods or services of one supplier from those of suppliers of similar goods or services. It may consist of personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds.

Function of Trade Marks 
Trade marks benefit both consumers and suppliers.  Trade marks benefit consumers by giving an assurance of origin, which in many cases is tantamount to an assurance of quality. They benefit suppliers by providing a focus for advertising and distribution.

Legal Protection
Rights to prevent others from marketing the same or similar goods or services under the same or similar sign arise at common law under the action for passing off or in some countries unfair competition law and/or by registering the sign as a trade mark for specified goods or services within a country, region or territory with the relevant intellectual property office.

Registration of Trade Marks for the EU and UK
Signs may be registered for:
In either case, signs are registered for specified goods or services that fall within a number of internationally agreed classes. 

Registration of Trade Marks Elsewhere
An application to register a sign as a trade mark for other countries or territories may be made directly to the intellectual property office of the country concerned or to the World Intellectual Property Organization ("WIPO") for countries that are party to the Madrid Protocol 

Effects of Registration
Registration of a sign as a trade mark confers the following rights upon the person who has registered the mark ("the registered proprietor"):

-      a right to prevent others from using a sign that is identical to the registered trade mark for the same goods or services;

-      rights to prevent others from using 
  • a similar sign for the same or similar goods or services; or 
  • the same or similar sign for the same or similar goods or services 
where confusion is likely (including the association of another supplier’s goods or services with the registered mark) because of the similarities between the sign and the mark and between the goods or services for which the sign is used and those for which the mark is registered; and

-      a right to prevent others from using a sign that is identical with, or similar to, the trade mark irrespective of whether it is used in relation to goods or services which are identical with, similar to, or not similar to, those for which the trade mark is registered, where the latter has a reputation in the EU or as the case may be the UK and where use of that sign without due cause takes unfair advantage of, or is detrimental to, the distinctive character or the repute of the trade mark.

Infringement
A trade mark is infringed by doing any of the above acts without the consent of the registered proprietor.

Advantages of Registration
An action for passing off requires evidence of reputation and goodwill. That usually consists of samples of advertisements and business stationery, marketing and sales figures and market surveys which small businesses or even large businesses that are launching a new brand or entering a new market might struggle to provide. Registration, by contrast, reserves a sector of the market for the new mark from the date upon which the application to register the mark is filed.

Collective and Certification Marks
Two special types of trade mark should be mentioned, namely collective marks and certification marks. 

A collective mark may be granted to an association of suppliers. Its purpose is to distinguish the goods or services of members of the association from those of all other businesses. 

A certification mark is a mark is a mark indicating that the goods or services in connection with which it is used are certified by the proprietor of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.

Enforcement
In England and Wales, claims for infringement of a registered trade mark may be brought in the High Court or the County Court.  

Claims for financial relief of £500,000 or less that can be disposed of in no more than two days may be brought in the multitrack of the Intellectual Property Enterprise Court ("IPEC"). Claims for damages of £10,000 or less may be brought in IPEC's small claims track. All other claims are brought in the Intellectual Property list of the Chancery Division. Such claims may be issued out of the Royal Courts of Justice or the Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester and Newcastle District Registries.

Claims in the County Court may be brought in Birmingham, Bristol, Cardiff, Leeds, Liverpool, Manchester and Newcastle.

Claims for infringement of an EUTM have to be brought in an EU Trade Mark Court. Both the High Court and the County Court have been designated as EU Trade

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