What is a trade mark?
|
Basically,
it is
a sign (also referred to as the 'brand' or 'brand name') used by a
business to distinguish its goods or services from those of its
competitors. Its purpose is to attract custom and to instil brand
loyalty.
It is a guarantee of consistency of quality that invites
repeat purchase, thus giving the 'brand' a competitive advantage over
lesser known competing brands. A
trade mark (brand) is
therefore a very valuable business asset
deserving of nurture and protection. A trade mark can be,
amongst other things, a word,
a logo/image, a slogan, an alphabetic or alphanumeric character, a colour or colour scheme, a smell, a sound/jingle, a product shape or the appearance of its packaging, and
any
combination of those things. Above all it needs to be capable of
distinguishing your
business, and its products and/or services, in the sense that it
is not
something already in the public domain that competitors are free to use
in the legitimate pursuit of trade. If it describes the
nature of your business, or its products and/or services, in a direct
and unambiguous way ( for example if the chosen mark is 'RED' for
paint) it would not be capable of functioning as a trade mark, that is
to say differentiate your product or
service
from those of the same
type from another provider. Lack of distinctiveness will make your mark
difficult to register unless you can show that consumers have come to
recognize it as a trade mark by virtue of its lengthy commercial
use.
|
Why search?
|
It
is essential
that
a new trade mark be professionally searched before being used
commercially. Your first question should be is our new mark available
for our exclusive use in our marketplace? You will probably know
what your main competitors are up to. What you probably won't know,
without
searching, is whether your chosen mark is registered to another in
respect of the same or similar goods and/or services. If it is and you
do not take reasonable care to discover that early, you might well run
into potentially serious legal problems following launch. You
could be forced into a doing an expensive and time-consuming re-brand.
As well as suffering financial loss you might well suffer great
commercial
embarrassment. The detriment to your
business and its reputation could be substantial and long-lasting, even
permanent. The search will also provide a good indication as to whether
an application to register your chosen mark is likely to be accepted
and what steps can be taken to improve registration prospects. Filing
an
application without first doing a search runs the risk of your
incurring wasted filing fees. You will therefore appreciate having that
initial search is a cost-effective way of
ensuring as far as you can that search and registration problems are
avoided. It is certainly a
lot less expensive than getting it wrong! The UK Patent Office website
offers a free search but be warned it limited in its scope and is not a
substitute for a full professional search carried out by an experienced
searcher familiar with linguistics, phonetics and goods & services classification, and accompanied by a
full analysis of the search results, with recommendations, from an
experienced trade mark attorney.
|
Why
register?
|
Registration
provides a number of advantages. Your mark is legally recognized as a
trade mark and that it is owned by
you exclusively .
You can chose how to exploit the mark. You can use it yourself and /or
license others to use it. The fact that it
can be found on a
publicly accessible register should deter others from using the
same mark in the same or
closely related business. Anyone not deterred possibly infringes
and you might be able to sue them successfully for infringement with
some measure of confidence. Indeed
the mere threat of being sued is sometimes enough to stop the
infringer. It also enables the relevant authorities to act if misuse of
your mark is part of counterfeiting activities. Registration can make
it easier to extend brand use to a wider range of goods and/or
services, and to secure corresponding registrations in other countries.
Whilst it is true that in the UK rights in an unregistered mark can be
acquired simply by its use, this is not the case in many other
countries that operate the 'first to file' principle granting exclusive
rights only in trade
marks
for which registration is secured.
|
What else?
|
There
are other important matters to consider. Are you certain that you own your trade
mark? If somebody else designed it for you ensure that you
not the designer has all the rights in the mark including copyright. What goods
and/or services should it be
protected for? Think about not just the goods/services for which
you are using or about to use the mark now, but also the goods/services
that you might genuinely want to offer in the future. Where do you want to register your
mark? Your customers might not be confined to the UK. You
should identify and try to register your mark in every country where
you do business whether direct or through a local subsidiary,
distributor or franchisee. Set up an archive of the use you make of
your mark in each and every country (e.g. copies of sales
invoices/delivery notes bearing the mark and goods, dated sales
literature, marketing material, brochures, advertising etc.).
Evidence of use might be useful in securing registration or
preventing cancellation of your
registration.
|
