United Kingdom trade mark law
From Wikipedia, the free encyclopedia
A trademark is a way for one party to distinguish themselves from another. In the business world, a trademark provides a product or organisation with an identity which cannot be imitated by its competitors.
A trademark can be a name, word, phrase, logo, symbol, design, image, sound or any combination of these elements.
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[edit] Conferred rights
The owner of a trademark can legally defend his mark against infringements. In order to do so, the trademark must either be registered, or have been used for a period of time so that it had acquired local distinctiveness (Prior Rights).
The extent to which a trademark is defendable depends upon the similarity of the marks involved, the similarity of the products/services involved and whether the trademark has acquired distinctiveness.
A registered trademark is relatively simple to defend in a court of law. An unregistered mark relies on the law of ‘passing off’ (where one parties’ goods/services are misrepresented so as to cause confusion between it and another good/service).
Rights have also been recently extended with regard to well known marks. The 2004 amendment of the UK Trademarks Act describes ‘infringement’ to have taken place on a dissimilar good/service if the trademark in question has an established reputation in the UK and its un authorised use takes unfair advantage of, or is detrimental to, the registered mark’s reputation.
[edit] Registering trademarks
The registration of trademarks in the UK is achieved through the UK Patent Office. If registration is accepted by the UKPO, a number of exclusive rights are bestowed upon the trademark owner. These rights allow the owner to prevent unauthorised use of the mark on products that are identical or similar to the registered mark.
When a trademark application is made to the UKPO, they decide whether the trademark that is being applied for is distinctive enough to be a trademark.
Registration usually takes about nine months. However, this time span can be greatly increased if any objections are raised to the marks registration by owners of similar registered trademarks or by the UKPO themselves.
Once a trademark is registered, it will be held on the register for ten years, after which it will need to be renewed in order to preserve the owner rights over it. It can also be allowed to lapse.
Trade marks are registered in one or more of 45 classes. There are 34 classes of goods and 11 for services. These classes group products that are deemed to be similar in function, and are identified by their number. For example, the registration of a trademark for a range of gymnastic and sporting articles is classified by the trademark registry into ‘class 28’. This class also encompasses decorations for Christmas trees!
[edit] Registrability of a trademark
Some of the main objections that the UKPO will make when trademarks are submitted for registration are usually related to the 'distinctiveness' of the mark.
An inherently distinctive mark is the easiest to register, as it has no prior meaning. These marks are not to be found in dictionaries. A good example of such a distinctive trademark is iPod.
Words that appear in the dictionary can still be registered. These arbitrary trademarks are meaningless in the context of their use. For example Apple Computer, or Apple Corps.
Suggestive trademarks do not describe a characteristic of the product, but with some imagination, are identifiable with their connected product. For example, ColdSeal windows.
Descriptive marks use words that appear in the dictionary that describe the product to which they relate. They are usually difficult to register, and the registrar needs to prove that the mark has become distinctive through its long term use. An example of such a descriptive mark is 'Brand Protect', a brand belonging to the leading intellectual property protection firm. Such a mark is said to describe the service in which the firm specialises.
Descriptive marks can be made distinctive by the addition of other elements to the name or logo. For example, the words ‘Brand Protect LLP’ written alongside the firm’s distinctive ‘elephant’ logo collectively could be described as distinctive, as this combination is unique to this firm.
[edit] Acquired distinctiveness
A descriptive mark can only be registered if it has ‘acquired distinctiveness’. This is achievable through its use, although proving that ‘acquired distinctiveness’ has been achieved usually relies on sales figures and advertising budgets.
[edit] Registration exclusions
Most countries exclude certain terms and symbols from being registrable. These include emblems, flags, royal insignia, and the rings of the Olympic Games. In addition, marks that are deceptive as to the country of the product’s origin and obscene marks are unregistrable.
[edit] Recent legislation
The current United Kingdom Trade Mark legislation is the Trade Marks Act 1994, which implements the European Trade Marks Directive into national law.
The United Kingdom Trade Marks Registry has put forward proposals that will radically alter the way in which UK national trade mark applications are examined from October 2007. At present, UK national trade mark applications undergo a full examination both on absolute (distinctiveness) and relative (prior rights) grounds. In October 2007, it is proposed that the search which forms a part of the examination of applications on prior rights grounds will become an advisory search in a similar fashion to the Community Trade Mark system, bringing into force Section 8 of the Trade Marks Act 1994. No longer will the UK Trade Marks Registry unilaterally be able to prevent the grant of a UK national trade mark application on the basis of an earlier pending application or prior registration for a conflicting mark, it will be up to the proprietor of that right to oppose the application when it advertised for opposition purposes.
Aspects of UK common law also relate to trade marks, most notably the common law tort of passing off.
[edit] External links
[edit] See also
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Intellectual property laws of the European Union (EU) |  |
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| Austria • Belgium • Cyprus • Czech Republic • Denmark • Estonia • Finland • France • Germany • Greece • Hungary • Ireland • Italy • Latvia • Lithuania • Luxembourg • Malta • Netherlands • Poland • Portugal • Slovakia • Slovenia • Spain • Sweden • United Kingdom See also: Directive 93/98/EEC • Directive 2001/29/EC |
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| Austria • Belgium • Cyprus • Czech Republic • Denmark • Estonia • Finland • France • Germany • Greece • Hungary • Ireland • Italy • Latvia • Lithuania • Luxembourg • Malta • Netherlands • Poland • Portugal • Slovakia • Slovenia • Spain • Sweden • United Kingdom See also: Community trade mark |
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| Austria • Belgium • Cyprus • Czech Republic • Denmark • Estonia • Finland • France • Germany • Greece • Hungary • Ireland • Italy • Latvia • Lithuania • Luxembourg • Malta • Netherlands • Poland • Portugal • Slovakia • Slovenia • Spain • Sweden • United Kingdom See also: Directive 98/44/EC • Regulation 816/2006 • Community patent • European patent law |
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| Austria • Belgium • Cyprus • Czech Republic • Denmark • Estonia • Finland • France • Germany • Greece • Hungary • Ireland • Italy • Latvia • Lithuania • Luxembourg • Malta • Netherlands • Poland • Portugal • Slovakia • Slovenia • Spain • Sweden • United Kingdom See also: Directive 98/71/EC • Regulation (EC) No. 6/2002 • Community design |
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