Registered trade marks

The primary function of a trade mark is to distinguish your business from other businesses and identify your business as the source of particular goods and/or services.

The law sets out what it considers to be a trade mark that can be registered. Typically, a trade mark is made up of words or logos or a combination. There are a few other unusual possibilities which can be considered as trade marks, because they too serve to distinguish one business or product from another and these include jingles, smells and the shape of goods or packaging. Often these unusual trade marks need careful consideration as to the likelihood of success and the form for application before applying to register them.

To be registerable a trade mark must fulfil all of the following criteria:

  • the primary function of a trade mark,
  • be capable of being represented graphically (which can be difficult when considering, for example, smells),
  • must not be descriptive of the goods and/or services that it is being used with, and
  • must not consist of words or other representations that traders in the same area of business may legitimately wish to use to identify the origin of their goods, for example, a surname or a geographical location.

In general, it is not possible to register as a trade mark any word or that does not satisfy these requirements. Occasionally it is possible to show that what may appear to be a descriptive trade mark on the face of it may be registerable after all, because you are able to provide evidence of the historical use of the mark and the way that customers see it as an identification of your business. However, as a general rule, the more unusual your trade mark is, the greater the chance that it will be considered to be a good trade mark that is registerable.

A registered trade mark gives you the exclusive right to use your trade mark for the goods and/or services that you have registered. Since registered trade marks are territorial it is necessary to file an application for registration in each country or territory in which you want to obtain registered protection. As a general rule, the countries or territories of interest should be those in which you genuinely intend to use the trade mark in a business context in the foreseeable future. It is often not sufficient to register a trade mark in an improbable trading country just to stop other people from registering there. There are often mechanisms in place to prevent or remove registrations made on this basis.

To obtain a registered trade mark in a particular country, a trade mark application will need to be filed in that country. For it to be acceptable, a trade mark application must meet specific legal requirements. Each application must list the goods and services on which the mark is to be used by reference to a pre-defined classification system consisting of 45 different classes. It is not uncommon for applications to be incorrectly filed with the wrong goods or services or the wrong classification. Since it is generally not possible to add new goods and services to a trade mark application or to change the trade mark, it is important to get it right at the beginning to avoid unnecessary fees and disappointment.

There are a number of application procedures that cover multiple countries. For example, the Community (European) trade mark procedure and the International (Madrid) trade mark procedure can both simplify matters and reduce costs in some cases. However, if you want registered protection in a country it is necessary to apply for registration in that country.

Most countries operate a procedure for the registration of trade marks which involves filing an application with the appropriate organisation which is then searched and examined for registerability under the relevant law. Should any objections be raised by the organisation there is often an opportunity to respond. However, once your trade mark has been deemed acceptable for registration it is published in order to allow interested third parties to object to the registration. If a third party has an identical or similar trade mark registered for identical or similar goods or services for which you are seeking registration, then they may be able to prevent your registration. If no further objection is raised or the potential conflict has been overcome, then your trade mark is entered onto the Register of Trade Marks. For an outline of the stages, time scales and typical costs involved in obtaining a registered trade mark, please see our Guide to Trade Mark Protection.

In most territories around the world, a trade mark registration initially lasts for 10 years after which it becomes renewable for further 10 year periods upon the payment of a fee

There are a number of benefits to owning a registered trade mark. Firstly, registration may deter people from using your trade mark without your permission. Secondly, it is easier to take legal action against anyone who uses your trade mark without your permission. Action can include using Trading Standards Officers or the Police to bring criminal charges against counterfeiters or anyone using your trade mark. Unlike unregistered trade mark rights, it is not necessary to establish a reputation in the trade mark before you apply for registration or before you enforce a registration against a third party, be it a competitor or other person or business. Nor is it necessary to show that there has been any harm caused to you by use by the third party. Instead, if a registered trade mark has been obtained and there is a genuine conflict with another trade mark it is often possible to start infringement proceedings relatively unhindered.

You are allowed to use the ® symbol next to your registered trade mark to warn others against using it. However, using this symbol for an unregistered trade mark or a mark that is still going through the application procedure is an offence.

Please see our Comparison of Registered versus Unregistered rights for a list of the advantages and disadvantages of the different types of protection.

If you would like to register your trade mark, or have a problem or matter concerning a registered trade mark, we would be happy to help.