A trademark can be anything; a word, logo, shape, colour, sound or smell which a business uses to differentiate their goods or services from other businesses. When a trademark is registered, the owner must be able to represent it on the application form. For example, sounds could be represented as notes or smell as a chemical formula.
How are trademarks protected?
If a UK trader uses a trademark for such a long time, it becomes to be associated with their goods or services. They can bring a ‘passing off’ court case. This can be against anyone else who uses it in the UK.
Anyone who misrepresents their goods or services are the trader’s, or who are connected with them. This includes if the trader somehow endorses their goods or services.
The mark does not have to be registered for the trader to do this, but they must prove:
- There is goodwill in the mark (ie that it has a good reputation in the marketplace)
- The mark is associated with their business
- They have suffered damage
Passing-off cases can be time consuming and expensive. You must take action as soon as you learn of an infringement as a delay will count against you. Many other countries give traders similar rights, but there can be important differences. Some countries do not give traders a solution at all.
A trader can apply to register a trademark. Most countries have a trademarks registry, and registration will protect the mark from infringement in that country. Traders should consider registering in every country where the mark is used. Alternatively, there are some registries that give protection in more than one country, but through one registration.
For example, the European Community trade mark registry, this gives protection throughout the European Union.
Registration gives a trader automatic protection – unless they have stopped using the mark, they will win any dispute if someone uses the same or a similar mark in the country or countries where it is protected. Most registries have similar criteria for registration and provide similar remedies to the trademark owner, but take advice on any differences.
Registration makes it easier for a trader to sell the mark, license someone else to use it or mortgage it – use it as security to raise money. Registration of a trademark gives the owner rights in court if someone has:
- No rights
- No legitimate interest in the name
- Registers it as an identical, or confusingly similar
- Internet domain name in bad faith. – eg to extort money from the trademark owner.
There are various official Dispute Resolution Procedures that operate in relation to domain names, such as the Nominet procedure in relation to .co.uk domain names. These usually give the trademark owner the right to have the domain name suspended or transferred.