Orange or Orange? The importance of trade mark protection
A brand or mark can help a business separate itself from the crowd. Globally distinctive brand marks such as the Apple logo or Coca-Cola sign are instantly recognisable to consumers.
These brand marks distinguish corporations and products that customers trust and will continually return to. A business’s most important asset, both in the eyes of the consumer and on the balance sheet, may well be its brand and associated reputation.
But how does a business protect its brand mark? The answer is by registering it as a trade mark.
But what is a trade mark and what protection does it offer? We consider what trade marks are, how they are registered in the UK and the protection they afford.
How can I register my mark and what protection does it afford?
A trade mark is a brand mark that has been registered, therefore granting the owner exclusive use of the mark within the classes against which it is registered.
For UK protection, trade marks are registered with the Intellectual Property Office (IPO). An application will require searches to ensure that the mark, or one similar, is not already registered for the same or similar products in a similar class. Trade mark protection lasts for 10 years, and, provided the mark is still being used, registration can be renewed.
Categories of goods and services
Trade marks are registered against the classes of goods or services for which they are intended to be used. There are 45 classes comprising different categories of goods and services.
This is not to say that if a mark is already registered, it cannot be registered by another proprietor within different, or indeed the same, classes. For example, the word mark ‘Orange’ is registered by the guitar amplification company against class 9 (includes amplifiers) and class 15 (includes musical instruments). The word mark is also registered by the cycle manufacturer, of the same name, against class 12 (includes cycles) and class 18 (includes holdalls). Both brands have the mark registered against class 25. The trade marks are differentiated by the fact they are identifying different products and services.
If a trade mark is used by an unlicensed party, the owner of the trade mark may be able to bring a claim for trade mark infringement. However, if a mark is not registered and another party is using an identical or similar mark, another option may be for the original mark holder to bring a claim for passing off.
Can all marks be registered?
Not all marks are capable of registration, and an application may be refused on absolute or relative grounds.
Absolute grounds to refuse registration
A trade mark will be refused registration if:
- The mark cannot be represented graphically
- The mark is purely descriptive in nature. For example, it would be unlikely that a watch manufacturer would be able to register the word ‘watch’
- The trade mark is contrary to public policy: words causing offence or those widely used in a religious context have previously been refused registration
Relative grounds to refuse registration
Where an application to register a mark conflicts with a mark already registered, the trade mark examiner may refuse registration. In this event, earlier mark holders may be notified and provided with an opportunity to raise objections against the new registration.
If this happens, it will likely be that unless the parties can come to an agreement, the party making an application for a new trade mark will either have to withdraw its application or the issue may have to be determined.
Trade mark registration may also be opposed where an earlier unregistered mark, which has generated goodwill sufficient to establish a claim for passing off, is being used in the course of trade. This is the case even where the earlier mark is only used in a specific locality. It is important that searches are undertaken and, where necessary, certain localities excluded from the trade mark’s applicability, to avoid later issues with validity.
Can a mark be registered internationally?
Brand marks are capable of being registered around the globe. For protection in the EU, it is possible to register an EU trade mark. Internationally, including within the EU, applications can be made either directly to individual countries or using the Madrid Protocol.
For more information or guidance, please contact:
T. 020 7227 7040
T. 0207 227 7461
This briefing is for guidance purposes only. RadcliffesLeBrasseur accepts no responsibility or liability whatsoever for any action taken or not taken in relation to this note and recommends that appropriate legal advice be taken having regard to a client's own particular circumstances.