What is a Trade mark?

A trade mark is a ‘badge of origin' and serves a central function of distinguishing the goods and services of one business from those of third parties. Trade marks are commonly associated with words and logos, although it is also possible to obtain a registered trade mark over packaging materials, colours, sounds and other forms of multimedia.

The Trade Mark Acts 1994 (TMA) governs the registration of trade marks in the UK and sets out what is and is not registrable as a trade mark in the UK, and the Intellectual Property Office (IPO) is the governmental body that is responsible for administering registered trade marks. Prior to submitting a trade mark application, there are a few preliminary steps that should be taken to ensure the highest chance of the trade mark being registered.

Step 1a: Identification

The TMA contains "absolute grounds" on which the IPO may refuse a trade mark application, most commonly where the trade mark (a) is descriptive of characteristics of the goods or services, or (b) lacks distinctive character. To take a practical example, "IP Solicitor" would fall foul of both grounds, as it is descriptive and it also so general that it cannot be associated with one business.

There are also more nuanced questions here, including whether a word, logo or other sign ought to be protected. In simple terms, if a sign is unique and distinctive, subject to the answer to step 1b, it should be registered in order to ensure that there is an exclusivity to use it. This includes words themselves and also logos incorporating those words.

Step 1b: Due Diligence

There are over 500,000 registered trade marks in the UK, which means that it is possible that there will be a potentially similar existing trade mark in the chosen classes (see step 2). The TMA contains a series of "relative grounds" for refusal of a trade mark application, which may be raised in opposition proceedings by prior rights holders.

Applicants should carry out prior rights searches in order to ensure that there is a clear path to registration. At its most basic, this includes searches via the IPO's register, but those searches need to be clearly refined for all potentially similar or identical marks, and a simple search alone is often insufficient. It also doesn't cover unregistered rights which could form the basis of an opposition.

Step 2: Classification

Trade mark owners only have an exclusivity to use a registered trade mark for the good and services that it is registered for. Trade marks in the UK are classified according to the NICE classification system, with 34 classes relating to goods and 11 relating to services. Applicants should be forward-thinking and, provided there is an intention to use the trade mark, it should cover all present and future offerings. Once a trade mark application has been submitted it cannot be amended, so the application process will need to be repeated if the classification is insufficient.

Step 3: Submission

Submission of the application itself is the most straightforward part of the process, although the most common mistake at this stage is that applicants often attempt to protect a proposed sign in their personal capacity as opposed to on behalf of their limited company. In some cases, there is good reason for this however, in many, the intention is that the trade mark will be a company asset.

Step 4: Examination, Publication and Opposition

Once a trade mark application has been submitted, the IPO will first examine the trade mark to see if it is registrable under the TMA and, if it is, the trade mark will then be subject to opposition proceedings for a period of two months. Where steps 1a and 1b have been properly carried out, the risk on both fronts is minimised, although it is common for existing rights owners to threaten or pursue opposition proceedings even if there are limited prospects of success. If such circumstances, a further evaluation needs to take place before taking any hurried steps in response.

Step 5: Registration

All being well, the trade mark will proceed to registration, and for many brand owners the registration certificate goes in the drawer, never to be thought of again. Trade marks are only valuable if they retain their distinguishing feature. Brand owners should exercise their rights to either oppose or challenge third-party usage that oversteps the boundaries of fair competition.