Top 10 trade mark myths
I've already secured protection for my brand by registering it as a company name or domain name.
Registering your brand as a company name or domain name is separate in law from trade mark registration and will not provide you with any protection against a third party using a trade mark which is the same or similar to your brand.
There is no need to go to the expense of registering a trade mark – the mark will be protected by copyright for free.
Slogans, phrases, names and titles are not protected by copyright. Although a logo may be an artistic work protected by copyright, the protections offered by copyright are not directed at dealing with the issues associated with using a logo in a trade mark sense. Furthermore, copyright in a work will eventually expire whereas a trade mark can be renewed indefinitely.
If I infringe someone else’s trade mark, I simply have to stop using it.
In addition to future use being prohibited, you may have to withdraw all of your existing products, re-design all packaging, drop new publicity campaigns, pay compensation and/or buy a licence from the registered owners.
Using the symbol ‘TM’ after a mark indicates that it is a registered trade mark.
The symbol ’TM’ has no legal significance in the UK. The ® symbol is the designated symbol for identifying a trade mark as a registered trade mark. Use of the ® symbol in relation to an unregistered mark is an offence under the Trade Marks Act 1994.
Only a name or logo can be registered as a trade mark.
Any “sign” which is capable of being “represented graphically” is potentially registerable as a trade mark in the UK. As well as business and product names and logos, this can include slogans, domain names, the shape of goods or their packaging, “jingles“ and colours
If I register a trade mark I have the exclusive right to that name in relation to all goods and services.
Trade mark registrations only give the registratant the exclusive right to use that mark in connection with the goods and services for which it is registered. It is only possible to register a trade mark in relation to the goods and services which you offer (or genuinely intend to offer in the future). Goods and services are classified into 45 different use classes for registration purposes and it is necessary as part of your application for registration to list the goods and services for which you are registering your mark and identify the classes which these goods and services fall into.
It is never possible to register the same trade mark as someone else.
Assuming that the trade marks are not used in respect of the same or similar goods or services, it may be that registration is possible even if an identical or similar pre-existing mark is registered. Even where a pre-existing trade mark has been registered in relation to similar goods and services, if the owner of the pre-existing mark decides not to raise opposition proceedings or gives consent the trade mark may still be registered.
I cannot apply for a trade mark unless I am ready to start using it immediately.
After a trade mark has been registered the holder has five years to begin using the trade mark. However, it is important to note that if the trade mark is not used within the five year period, anybody can apply to have the trade mark removed from the register.
If a mark is unused for a continuous period of 5 years it may be removed from the register.
Registering a trade mark in the UK means the trade mark is protected in every country.
Every country has its own trade mark regime so registering a trade mark in the UK does not mean the mark is protected elsewhere. If there is a need for a trade mark to be registered in several countries in Europe it may be appropriate to apply for a Community Trade Mark (CTM). If granted, this will provide protection in all 27 countries which are members of the European Union.
Following registration of your mark in the UK (or as a CTM), there is also the further possibility of applying for an International Trade Mark in countries who are, like the UK, signatories of the Madrid Protocol.
Registering a trade mark is too expensive and difficult – it is better to take the risk as no one else would choose the same trade mark anyway.
The majority of trade mark applications are successful and the cost of registering a trade mark is relatively low when you consider the investment you make in building up your brand and the potential cost of future disputes which may arise if you do not register your trade mark, including legal fees and/or rebranding costs.
The registration fees payable for a UK trade mark are typically in the order of a few hundred pounds and we offer low cost fixed-fee trade mark registration services, giving you certainty of cost from the outset.
Call Austin Flynn or Sam Price (our Intellectual Property law experts) to discuss any of these points further.
