Trademarks – a valuable piece of intellectual property

 

By Hasnain Shah

The law surrounding trademarks comes under the Trade Marks Act 1994 (TMA 1994). For the purposes of the act, a trademark is defined as:

‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings’

Typical examples are names, words, phrases, symbols, designs, images, or a combination of these elements. However, the definition is wide enough to potentially include unconventional subjects including sounds, shapes and colours.

By registering your trademark you obtain exclusive legal rights that can allow you to prevent others from making unauthorised uses of conflicting marks. The TMA 1994 allows for trade mark holders to bring actions for infringement against those who use a trademark without consent. Infringement actions are much easier to bring and are often more successful then passing-off claims for unregistered trade marks.

Furthermore, by registering, you obtain protection for ten years and have the opportunity to renew for periods of ten years without limit in the time thereafter. This is provided that that the trademark does not lose its ability to distinguish the related goods or services and is kept in use.

In order to obtain a UK trademark registration, it is necessary to make an application to the UK Trade Mark Registry under the UK Intellectual Property Office.  In the initial application it is essential to provide a clear representation of the mark and a list of goods and services for which you’re using the mark. Goods and services come under forty-five classes. Depending on the goods or services, you may require one or several classes for protection.

The Trade Marks Registry will then assess whether the mark meets the criteria set under the TMA 1994 for registration. Common grounds for refusal include: the trademark not being distinctive enough, this could be due to a similarity with a previously registered mark;  the trademark includes deceptive information, for example concerning the quality or source of the goods; and the trademark contains a description of the goods/services or characteristics of them.

Once the criterion has been satisfied, the trademark will be published in the Trade Mark Journal. Other trademark holders will have the right to object during this stage, however if after two months no credible objections have been established, then the trademark will be successfully registered.

If you would like to be put in touch with a trademark specialist, please call Caven free on 08001 221 2299 or fill out the web-form.

Hasnain Shah is one of Caven’s most experienced and knowledgeable telephone advisors.

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