One of the most important elements for any firm to consider is its good reputation and a company brand is a key mechanism customers use to recognise a business and its products. One of the most important ways businesses can protect this is by registering a trade mark.

Trade marks are signs that distinguish the goods and services of one trader from those of another. In simple terms, a trade mark is a badge of origin. To be registrable, a trade mark must be distinctive for the goods or services for which a business is applying to register it and must not be deceptive, contrary to law or morality, or similar or identical to any earlier marks for the same or similar goods or services.

The history of trade marks can be traced back to ancient times, and the existence of rules governing the use of such marks goes back to the medieval craft guilds. It was only in the 19th century when the idea evolved that a mark which had become distinctive of a particular trader’s goods, and so attracted valuable goodwill, could be considered as a type of property, now described as ‘intellectual property’.

In the middle of that century there also developed the right to take action in the courts against infringement of a trade mark, even where there was no intention to deceive on the part of the infringer. The usefulness of such an action was, however, limited by the need for a trader to prove that the mark concerned was in fact capable of distinguishing his goods, and that it actually belonged to him.

Trade marks do not need to be registered. Providing that sufficient trading reputation and goodwill has been built up in a mark, a degree of protection is afforded by common law. Registration of the mark, on the other hand, gives an immediate right to stop someone using the same or similar mark on the same or similar goods and services, without the need to prove reputation or demonstrate confusion.

Registration fee

The fee for a UK application is £200. This includes one class of goods or services from the list of 45 available classes. It then costs a further £50 for every other class applied for. The process in the UK is relatively quick and normally takes a few months. A trade mark lasts for 10 years from the date of registration. The Patent Office will write to you a few months before the renewal date, asking if you wish to renew your trade mark for a further 10 years.

Once registered, a trade mark can last for ever, subject to renewal, and can be protected while it is in constant, relevant use. A trade mark can first be registered for 10 years and then renewed at 10-year intervals, while exclusive rights can be kept for as long as the trade mark is renewed. The Bass triangle, for instance, has been protected since 1 January 1876.

In 2005, the Patent Office registered 18,138 applications with the education, entertainment, sporting and cultural applications classification (class 41) being the most popular, receiving just over 4,000 registrations. The company to register the most trade marks in 2005 was Unilever, while other firms in the top 10 included BT, Asda and the National Lottery.

The vast majority of goods and services are covered by ‘regular’ trade marks. These marks function to indicate the trade origin; in other words, they link the owner of the mark to the goods or services and the goods or services to the owner. However, there are certain marks that do not have the same function as a regular trade mark known as certification marks or collective marks, although these are very much in the minority and account for less than 0.001% of all trade mark applications received.

Using the ™ sign does not indicate a trade mark is actually registered, only that it is being used in a trade mark sense. A firm would be breaking the law, under section 95 of the Trade Marks Act 1994, if it used the registered symbol ® or the abbreviation ‘RTM’ when a mark is not registered.

Even if a mark is registered, a business does not have to identify it as such. A business can choose to use the ® symbol or the abbreviation ‘RTM’ (for registered trade mark) to show that a trade mark is registered, but this could mean that the mark is registered somewhere other than in the UK. The ® symbol usually goes after a registered trade mark, in a smaller type size than the mark itself, and in a slightly raised position, but none of this is compulsory.

Laying down the law

Once a trade mark has been registered, the right can be used or enforced in a number of ways:

  • Another party can be given permission to use a trade mark by granting a licence
  • Mortgaging a trade mark can be used as security for a loan. The mortgagor has a legal right in the trade mark until the loan is repaid
  • A trade mark can be used as an effective marketing tool
  • Displaying rights may deter people from using a trade mark without permission
  • A UK-registered trade mark only protects you in the UK
  • Resolving disputes. If a trade mark is used without permission, it can be stopped
  • If a registered trade mark is used without knowledge or consent, the offender may be found guilty of counterfeiting
  • Certified copies can be used to help resolve a dispute or to apply for trade marks abroad.

It’s worth noting that a UK trade mark only affords exclusive rights within the UK. To prevent someone using or selling goods bearing a name or logo abroad, a business will need separate trade marks in those individual markets.

There are three routes to secure this protection overseas: a series of individual trade mark applications, filed in each country; an application to the Office for Harmonisation in the Internal Market (OHIM) for a European Community trade mark registration to secure trade mark protection in all EU countries; or an application to the World Intellectual Property Organisation (WIPO) in Geneva, to obtain trade mark registration in a number of countries across the world.

Since 1996, there has been a European Community mark with a central trade marks registry located in Spain. The OHIM provides a single trade mark registration enforceable across every EU member state, while WIPO processes all international trade mark applications, covering 67 countries including the US, Japan and the UK. The Madrid Protocol, as it is known, gives UK businesses the opportunity to protect their trade marks internationally.

The Patent Office’s search and advisory service can advise on whether a mark meets the requirements for registration. Searches cost £94 per mark in up to three classes, plus £11.75 per extra class. The Office will provide a written report within 10 working days of receiving all the information needed to carry out the search.

Further information on all forms of intellectual property, including trade marks, can be obtained from the Patent Office’s telephone enquiry unit on 08459 500 505 or at www.patent.gov.uk.

Some applications may benefit from the input of a professional who is experienced and qualified in trade mark matters. The Institute of Trade Mark Attorneys can offer advice and a list of its members on 020 8686 2052 or at www.itma.org.uk

Lawrence Smith-Higgins is head of awareness, media and innovation at The Patent Office