A trademark (or trade mark) is the 'badge' of a business. They enable customers or clients to differentiate and distinguish goods or services from different traders in the market place. Trademarks can take different forms but they are usually words or logos. The overall aim of a trademark is to ensure visibility and recognition by consumers in the market. Some businesses use words and logos to identify their goods and/or services from others in the market but do not register these marks (unregistered trademarks). Registering a trademark will give the owner the exclusive right to use the mark in connection with specific goods or services and will stop other businesses that sell the same goods or provide the same services from using that same, or similar mark. Marks that are identical or similar to one another can co-exist in the market as long as they are in relation to different goods and/or services.
Trademark infringement occurs when the sign used is:
- identical to the registered trademark and is used in relation to identical goods or services;
- identical with the registered trademark, and used in relation to similar goods or services or similar to the registered trade mark, and used in relation to identical or similar goods or services, and is likely to confuse the public; or
- identical or similar to the registered trademark and the trademark has a reputation in the UK which using the sign would take unfair advantage.
Before registering a trademark, it is always best to get the appropriate checks done to see if the mark is similar to a pre-existing registered trademark. For example, a trade mark must be distinctive and must not be identical or used in relation to goods or services which are identical to those for which the trademark is registered.
Trademarks are registered in classes, which classify the goods or services the mark is being registered for. There are 45 classes which are made up of terms and descriptions. It is important to clearly identify what the business does and include all the terms applicable now or in the future to ensure that the trademark is correctly registered to give the best protection available.
Trademark infringement is actionable by the trademark proprietor. If a trademark application is filed in the same classes and have specified similar/identical terms, the other party will be notified and will have the opportunity to oppose it should they believe that allowing registration of the mark would lead to confusion by the public. The aim is to always remain distinctive in the market.
The Intellectual Property Office (IPO) can offer a service to help avoid infringement. The Right Start Application allows the IPO to assess the application and report to the applicant whether it meets the requirements for registration.
The information contained in this article is for information purposes only and is not intended to constitute legal advice. If you require further information, our commercial team would be more than happy to assist you. Please contact us at firstname.lastname@example.org or call us on 029 2009 5500 to speak to one of our team.