Trade Mark Law

The law affords several different avenues of protection which should be considered and where appropriate pursued in every business’ branding strategy.

We will focus here on the protection of trade mark registration.

Trade marks will be core to a successful branding strategy.

A registered trade mark provides its owner with monopoly rights to use the trade mark in question, thus preventing others from trading off the reputation built up in the brand.

To prove ownership of these rights, the owner need simply refer to his trade mark registration numbers.

Proving equivalent rights in the absence of a registered trade mark will usually be a difficult process involving the need to produce substantial evidence. In the UK, trade marks are only registerable if they meet certain legal criteria.

They must be capable of:

• being represented graphically; and

• distinguishing one provide of goods and services from others.

 

It follows that an impactful, distinctive trade mark is far more likely to be capable of registration than purely descriptive words or logos or trade marks lacking in distinctiveness.

Obviously, since a registered trade mark owner has a monopoly in a mark, another person will also be unable to use or register a trade mark which is similar to other trade marks already registered for the same or similar goods or services.

 

Trade marks may be registered in relation to a range of different aspects of a business’ brand. There is often a misconception that a trade mark simply means a brand name or logo. However, trade marks may be colours, shapes, sounds and even smells.

As an example, consider brands of chocolate.

Which brand is conjured up by the colour purple and which brand is produced in pyramid-shaped chunks. Both are registered trade marks.

Brand owners may attempt to register a UK trade mark, a single European Community trade mark (CTM) which will cover the 25 member states of the EC and/or separate trade marks in a range of countries across the world through the World Intellectual Property Organisation (WIPO) depending on their proposed geographical reach.