Trade Mark Registration

What is a trade mark?
A trade mark is usually a word or logo or a combination of both, used to distinguish the product or service of a particular trader. Registering a trade mark can be essential to protect existing goodwill and reputation, or when creating a new image or a new product or service.

The definition of a trade mark for the purposes of the Trade Marks Act 1994 is any mark which:
(a) can distinguish between the goods and services of one trader from the goods or services of another, and
(b) can be represented graphically.

Why register a trade mark?
Subject to any earlier rights which may be established, registration of a trade mark gives the owner a right to exclusive use of the mark in respect of the goods or services registered. The owner can sue for infringement of his registration if someone else uses the same or a similar mark on the same or similar goods or services. Large sums of money may be spent on designing and advertising a particular product and mark. Unauthorised use of that mark may mean the rightful owner losing business and goodwill.

If the trade mark is not registered then one may seek redress through the courts under common law in a "passing off" action. This is a much more complicated procedure. Firstly, the owner must establish that the mark is associated with his goods or services in the mind of the public. He must then persuade the court that the mark used by the other party is likely to cause the public to assume that the goods and services of the other party could be mistaken or associated with those of the owner, and that this will cause damage to his trade.

If, however, the mark is a registered trade mark it is a much simpler action. To sue for infringement under the Trade Marks Act the owner only has to show that someone else has used a mark the same as or similar to that of the owner's in connection with goods or services that are the same or similar. If a successful action is brought, the owner of the mark may be entitled to damages, an injunction to stop the unauthorised use of the mark and the distribution of goods which infringe the mark and/or a claim to the profits made by its infringement.
In certain circumstances the deliberate use of a registered trade mark on goods, by another person and without the owner's knowledge, may be classed as counterfeiting. This is a criminal offence.
The identity of a business and its brand name are important assets. When a business is sold, the fact that its name, and any brand names it uses, are registered as trade marks, can be important to reassure the purchaser that these important assets are protected. Indeed, a valuable trade mark and the rights under it can, in some cases, be sold as separate, identifiable assets.

Who may register a trade mark?
Any trade mark owner, whether a British subject or not. The mark must be used or proposed to be used in the United Kingdom.