• Trademarks

What is a trademark?

Trademarks are badges of origin. They distinguish the goods or services of one trader from another and can take many forms; for example words, slogans, logos, shapes, colours and sounds. 

Trademarks are registered for specific goods or services within individual subjects, known as classes. It is possible for others to register identical or similar marks as long as it is in a different, unconnected class. 

For example Swan rental cars, Swan matches and Swan electricals. There are 45 classes to choose from - A list can be found here 

They should not be descriptive and must not include common surnames, geographical names, registered company names or anything implying royal patronage. 

In Europe Trademarks must be registered in order to have protection. Provided they are looked after properly, see below, a Trademark can last indefinitely.

To continue protection the Trademark must be

• Used in commerce

• Have fees paid as required to keep it in force

• Must not become generic, such as a noun or verb in common usage

• Must be identified as a Trademark by ® in some countries

Make sure that your chosen trademark does not infringe someone else’s and that you are free to use it. You can complete a free search in the Business and IP Centre. This database is linked directly to the Intellectual Property Office.

Decide which types of goods or services you need to protect. You should think about your future plans to ensure your protection covers all the areas your business might need.

Think about the geographical coverage you need. You can register a trademark to protect you in the UK, throughout the European Union, Internationally or in individual countries.

Make sure your trademark is used in the correct way. It is the mark that identifies your goods or service to consumers, so incorrect use could harm your reputation. Allowing your trademark to become a generic name, like aspirin, escalator and linoleum, results in the loss of your trademark – so beware.

Once you have a registered trademark you need to check to make sure no-one infringes it by having a similar trademark in the same classes as your goods and services. 

If you see someone infringing your trademark, seek advice from a trademark attorney. They can take action to stop the infringement or could negotiate on your behalf to license your trademark. Cases rarely end up in court though that is the ultimate sanction of owning a trademark.

For a British Trademark fees are required every 10 years to keep a Trademark in force.

Protection in Britain can also be obtained by using a national mark. Since 1st April 1996 two schemes have become available.

• The Community Trademark (OHIM, from Alicante, Spain). Details can be found in the Community Trademark Bulletin, This allows protection in designated states within this agreement the EU.
• The Madrid Agreement Protocol, (By WIPO, Geneva). Details can be found in the WIPO gazette of international marks. This allows protection in designated states within the agreement Internationally.

Generally there are two types of Trademark searching

• Trying to identify the proprietor of a known mark

• Establishing clearance to use a Trademark

The latter is more complicated because it means searching for similar marks rather than an identical match. The phonetic spelling of a Trademark must be taken into account, also unregistered trade names not normally found on databases.

Until recently the only international registration was 'The Madrid Agreement' but this did not include Britain or USA. ‘Les Marques Internationales' published from 1893 arranges the registrations in numerical order with annual name indexes. In 1996 the gazette changed its name to 'WIPO-Gazette of International Marks'.

In April 1996 'The Protocol to the Madrid Agreement involves designating member states, which then have the freedom to refuse registration. This does not affect registration elsewhere.

The new scheme for Community Trademarks also became available from 1996. Registrations are valid for the entire of the European Union. As with Madrid a country can object to a registration, but in this case the entire registration for the EU will fall if the objection is sustained. 

The Paris Convention of 1883 regulated trademark activity - it provided for the '6ters'. Marks for governmental or inter-governmental organisations where a flag, names, initials etc are excluded from registration.

References

The British Library Business & IP Centre

The Business & IP Centre has all the business and Intellectual property information you need as an innovator and entrepreneur.

Can be contacted by phone - 020 7412 7454/7919 or by email 

You can take a look at our web page 

The Intellectual Property Office

The IPO is the official government body responsible for granting Intellectual Property rights in the United Kingdom.

Can be contacted by phone– 08459 500505 or by email 

You can take a look at their web page 

Join us online