06 Apr 2018
By Martin O’Neill, a Senior Associate in Wright, Johnston & Mackenzie LLP Corporate & Technology teams who holds a Masters Degree (LLM) in IT Law
Strong brand identity goes hand in hand with most successful businesses. One way of protecting your business identity is through the use of trade marks. A good trade mark strategy can allow you to robustly and quickly combat an infringement of your brand should the need arise.
Trade marks have been used historically to show a prospective purchaser the origin of goods and services they are interested in. One of the earliest registered UK trade marks was Bass Brewery's triangular logo which was widely used on ale products since the 19th century. Trade marks have however been in use globally for many more centuries in one guise or another.
Whilst historical marks have typically comprised of words and/or symbols, trade mark registrations have in fact been granted more recently for more unusual characteristics of origin like sounds and even smells. Two famous examples of registered sonic marks are the fanfare introducing 20th Century Fox productions and the punchy “Intel Inside” jingle used to help sell computers with the relevant microchips on board.
Domestic trade mark rights can relate to both registered and unregistered marks. The holder of a registered mark should have much stronger rights than if it were reliant only on an unregistered mark. These superior rights are evidenced if we look at some of the ground rules for trade mark disputes.
In cases involving infringement of an unregistered trade mark or trade name, to be successful you generally must show that you have goodwill in relation to your business, that there has been a misrepresentation by a third party in relation to this goodwill, and in addition that there has been damage caused by that misrepresentation. These elements are not always easy to show and there is a notable burden of proof on those looking to rely solely on unregistered rights marks in the event that an unscrupulous third party is making unauthorised use of their brand.
The beauty of holding a registered trade mark is that is gives the holder something akin to a monopoly right to the registered mark. The holder of a registered mark will often have an entitlement to stop a third party from using their mark without necessarily needing to show that they have suffered a loss from infringing activity.
The registered mark holder should be able to stop the third party using the same mark for goods/services that are the same as or similar to theirs. It may also afford a remedy against someone using a mark which although not exactly the same, is sufficiently similar.
When registering a trade mark you will need to specify one or more “classes” in relation to which you are applying for protection. There are 43 standard classes which cover amongst them a wide variety of goods and services.
For most businesses it is likely that there will be more than one brand name and/or symbol that you may choose to utilise in your business and that you could seek to protect with a trade mark registration. There may also be a number of different trade mark classes which could be relevant to your business. Often you will have a variety of combinations of word marks and symbols. On the assumption that you do not want to write a blank cheque, you will want to be strategic about which marks to prioritise.
Territorial considerations are likely to be relevant for most businesses too. A UK based company has the option of seeking a UK mark only, or to look at one or more international registrations. Again tactics may dictate which jurisdictions to lead with, with a view to a wider portfolio.
Until such time as you have secured your registrations, bear in mind that a registered trade mark is not a prerequisite for using the ™ legend. When the registered mark is secured, it can be displayed with the ® symbol that we are used to seeing alongside famous brands.
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