Trade marks 101: Part 1

In this two part series, Perri Byrne and Liam Faulkner are going to take us on a whistle stop tour of trade marks. Here, in Part 1, Perri outlines what a trade mark is. She then goes on to explore the benefits of registration. In Part 2, Liam will explain how to register a trade mark.

What is a trade mark?

A trade mark is defined under s.1(1) Trade Marks Act 1994 as ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of another’. In other words, a trade mark enables consumers to identify goods or services as originating from a particular company or relating to a certain product or service. Trade marks typically take the form of words or logos, though it is possible to protect more unusual forms of trade marks such as colours, slogans, shapes of products or packaging, sounds and even smells.

Trade marks may be registered or unregistered. Registering trade marks usually offers the best protection but unregistered trade marks can be enforced in certain circumstances under the law of passing off.

It is important to distinguish trade marks from other types of registration such as domain names or company names. Registering a company name at Companies House does not provide trade mark protection for that name. If a person registering a company name wishes to prevent third parties from using an identical or confusingly similar name in the course of trade, it is important to file a separate trade mark registration to better protect the name.

What are the benefits of owning a registered trade mark?

If your register your trade mark, you are entitled to:

  • sell and license the brand
  • take legal action against anyone who uses the brand without permission, including counterfeits
  • use the ® symbol next to the brand – to alert others that it is a registered mark and warn anyone against using it.

For more information about trade marks, we recommend you visit the Intellectual Property Office website.

 

PerriThis blog post is written by Perri Byrne. Perri is a MLaw student working in a business & commercial firm within the Student Law Office at Northumbria University. Upon graduation she hopes to obtain a training contract within a commercial law firm. Meanwhile, she plans to carry on her work at the Citizens Advice Bureau and to undertake a paralegal position in order to enhance the skills which she has developed.

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