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Trade Mark Registrations – Factsheet

A trade mark registration protects your brand from unauthorised use and guarantees your freedom to continue using your trade mark. Most countries have a recognised trade mark registration system and we are experienced in obtaining registrations worldwide.

What is a trade mark?

A trade mark is a sign which, when used in the course of trade in the provision of goods or services, can serve to distinguish one trader’s goods or services from those of other traders. Commonly, a trade mark is a word, a picture (logo), or a combination of the two, but other ‘signs’ such as the shape of a product or its container, sounds, or even smells may be registered as trade marks.

Rights given by registration

Registration of a trade mark gives exclusive rights to the proprietor to use the trade mark in relation to the goods or services for which it is registered. It also gives the right to take legal action against competitors who might, inadvertently or otherwise, infringe the proprietor’s registered trade mark rights by using the same or a similar trade mark on goods or services identical or similar to the goods or services covered by the registration.

Also, the owner of a trade mark registration comprising a mark having a ‘reputation’ in the UK, for example, can sue for trade mark infringement even if the goods or services on which the infringer is using the offending mark are not similar to those covered by the registration.

Choosing a new trade mark

When thinking of a new trade mark to use, the aim should be to find a mark which is both protectable, i.e. capable of registration, and not used or registered by others. To be registgratable, a trade mark should ideally be:

  • not already registered by a third party
  • not directly descriptive of the goods or services
  • not a surname or a geographical name
  • not laudatory
  • not deceptive

We can assist you in this process by searching the trade mark databases and providing advice. A search through an index of UK limited company names can also be arranged, to establish whether or not there is a company with the same name as your mark in the UK.

What is involved in applying for a trade mark registration?

The procedure in the UK, EU and most other juristicitions falls into four distinct stages: filing; examination, publication, and registration.

1) Filing – an application is filed at the Trade Marks Registry, specifying the goods or services for which registration is sought and indicating the classes into which the various goods or services fall.

2) Examination – once filed, the application is examined by the Registry, in order to ascertain whether the trade mark is acceptable for registration. The Registry will not refuse registration on the basis of a potential conflict with an earlier trade mark, but will notify the owner of any earlier application or registration of your application. In most cases the official examination results are issued by the Registry within one to two months from filing the application. This is a variable matter which depends upon the Examiner’s report. It may sometimes be necessary to attend a Hearing at the UK Trade Marks Registry in order to discuss the appplication with a Senior Examiner, particulary in a border-line case.

3) Publication – once the examination has been successfully completed, the application is published in a Trade Marks Journal. The trade mark application is then open to public inspection and possible opposition for a period of up to three months from the date of publication. If an opposition is raised by a third party against the application, then the matter has to be considered and appropriate action taken.

It may be possible to deal with the opposition in a relatively simple exchange of correspondence. Again, this area is difficult to define precisely, as much depends upon the individual case. We can adivse further at the time if it should arise.

4) Registration – if there is no opposition, or any opposition has been resolved, then the application can proceed to registration on completion of certain formalities at the Trade Mark Registry. A registration certificate is then issued and the trade mark is placed on the Register for a period of ten years from the date of application.

Renewals

Trade mark registgrations normally need to be renewed every 10 years. We, or our renewal associates, can remind you of this deadline if you wish.

Consequences of non-use

A registred trade mark needs to be used to ensure it is not at risk of being attacked by a third party or removed from the Resister.

Is it necessary to indicate that a trade mark is registered?

In somes countries it is advisable, and in others obligatory, to indicate that the trade mark is registered, and the way in which this should be done varies from country to country. Where a single mark is used in a number of countries, labels, packaging, sales literature etc. are often printed centrally in one country, and in this case it would be good practice to place an asterisk next to the mark whereever it appears, and use a foot note where convenient along the lines of:

“…………………..(insert trade mark) is a trade mark of ……………….(insert Proprietor’s name) and is registered in the following countries: – (list countries where registered).

You should not represent the mark as registered in a particular country where it is not, in fact, registered, and this can occur inadvertently when the designation ® is used. If in doubt, the letters “TM” can be used to denote trade mark. Further advice relating to the use of trade marks is available on request.

Watching

Due to the increased emphasis on rights being granted to the first to apply to register a trade mark, there is now more responsibility on trade mark owners to police their mark and to be aware of the existence of any subsequent applications which may be in conflict. We therefore strongly recommend placing a watch over trade marks in countries of interest. We can supply information on request.

What about registering a trade mark abroad?

With regard to the registration of trade marks abroad, the procedure is in general similar to that in the UK, with a separate application being filed in each country where a registration is required (although there are two “collective” systems described briefly below). There is some variation in the requirements of different countries, and in respect of costs which in general are higher than in the UK.

European trade mark applications

It is posssible to file a Community Trade Mark Application covering all of the countries in the European Union.

International trade mark applications

The Madrid Protocol system enables the filing of a single application designating a number of member countries.

Members of the Madrid Protocol – Albania, Algeria, Antigua and Barbuda, Armenia, Australia, Austria, Azerbaijan, Bahrain, Belarus, Belgium, Bhutan, Bosnia and Herzegovina, Botswana, Bulgaria, China, Colombia, Croatia, Cuba, Cyprus, Czech Republic, Democratic People’s Rep. of Korea, Denmark, Egypt, Estonia, European Union, Finland, France, Georgia, Germany, Ghana, Greece, Hungary, Iceland, India, Iran (Islamic Republic of), Ireland, Italy, Japan, Kazakhstan, Kenya, Kyrgyzstan, Latvia, Lesotho, Liberia, Liechtenstein, Lithuania, Luxembourg, Madagascar, Mexico, Monaco, Mongolia, Montenegro, Morocco, Mozambique, Namibia, Netherlands, New Zealand, Norway, Oman, Philippines, Portugal, Republic of Korea, Republic of Moldova, Romania, Russian Federation, Rwanda, San Marino, Sao Tome and Principe, Serbia, Sierra Leone, Slovenkia, Slovenia, Spain, Sudan, Swaziland, Sweden, Switzerland, Syrian Arab Republic, Tajikistan, The Former Yugoslav, Republic of Macedonia Tunisia, Turkey, Turkmenistan, Ukraine, United Kingdom, United States of America, Uzbekistan, Vietnam and Zambia.

Southampton Office

Kings Park House, 22 Kings Park Road
Southampton SO15 2AT, UK
info@chapmanip.com
T +44 (0) 23 8000 2022
F +44 (0) 23 8000 2023

Munich Office

Tal 44, 80331 Munich,
Germany
munich@chapmanip.com
T +44 (0) 23 8000 2022

Cardiff Office

Cardiff Business Technology Centre
Senghennydd Road, Cardiff CF24 4AY, UK
cardiff@chapmanip.com
T +44 (0) 29 2009 9999
F +44 (0) 29 2066 4319

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