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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Whose website is it anyway?

A guest post from Elaine Campbell, Solicitor Tutor

This week Business and IP Centre, Newcastle launched the Innovator Elevator – a 2 day programme designed to give local businesses tools, network opportunities and the energy to help them grow their business. It took place at Boho One in Middlesbrough and featured acclaimed speakers such as Alex Shiel, Di Gates, and Debi Beattie.

On day 1, I followed the official twitter hashtag #InnovationElevator with interest. It shared the questions that people were asking, the tips that speakers were giving, and photos from the day.

One tweet which jumped out at me was:

This is an issue which the Business & Commercial firms at the Student Law Office are regularly asked to advise on. Some clients may be starting up and thinking about engaging a designer to help with their new website. Others may have had a website for many years, but want to know what their rights are. Usually the question of who owns the website becomes an issue if the business owner wants to sell it or use another designer.

So here are some top tips!

Get everything in writing

You’ve asked a designer to create a website for you. You’re going to pay them, so surely you own all of the intellectual property rights in that website, right? Wrong! Sadly this is a misconception which can cause problems later down the line.

If you commission someone to make a website for you and they write the code that underpins that website, they will own that code. If they write the text, they will own that text. If they take photos and put them on the website, they will own those photos.

However, the law says that you and the designer can have a written agreement which overrides this. So it’s important that you sit down with your designer and agree the terms on which you are happy to proceed. The agreement needs to say who owns what, in terms of intellectual property.

A written agreement can be useful for a range of issues:  price and payment, what will constitute a finished website, who will deal with bugs/problems/updates, and deadlines (to name a few!).

Make sure you understand the difference between assignment and licence

Some designers have pre-prepared T&Cs. They can include legal language which can be difficult to understand.

The T&Cs might say that the designer assigns all of the intellectual property rights which exist in the website to you. This is good! Assignment means transfer. So, in this instance, the designer is transferring all of his/her rights in the website to you.

Alternatively, the T&Cs might say that the designer will give you a licence to use the intellectual property rights in the website. This may be less satisfactory, depending on the circumstances. Licensing, put simply, means renting. In this instance, the designer is retaining ownership of the rights but allowing you to use them. There are lots of different types of licences – some will let you use the website for anything and for any period of time, others are more restrictive.

It is always advisable to get independent legal advice before agreeing to any contractual terms.

Who is recorded as the registrant of the domain name?

Whilst the registrant is not the owner of the domain name, they do have the contractual right to use the domain under the registration agreement with registrar.

Here’s where problems arise:  Abigail from The Best Website Development Company registers the domain name BeansBeansBeans123.com for The Bean Company. Abigail leaves The Best Website Development Company. Many years pass and the directors of The Bean Company decide to sell the domain. They need to know the account details so they can tell the registrar that it should be transferred. But those details have been lost and no one knows where Abigail works now.  The registrar will not speak to anyone who does not have the account details.

It’s rare for an issue like this to occur but it’s always worth checking who the registrant is. Then you will be fully informed. To do this you can carry out a WHOIS search. If your website ends in .co.uk you can do a quick search on the home page of Nominet.

Any more questions? 

If you are in the North East and would like further information about how the Student Law Office works, please see this page for more details.

This blog post was written by Elaine Campbell. Elaine is a Solicitor Tutor at Northumbria Law School. She teaches exclusively in the Student Law Office, where she supervises students who provide free legal advice to local businesses. Prior to joining the University in 2011, Elaine qualified as a solicitor at Dickinson Dees LLP (now Bond Dickinson LLP) and later worked at Sintons LLP. She specialised in commercial and intellectual property law. 

EC

Welcome to our blog!

Welcome to the first blog post of wetakecareofbusiness!

This blog is brought to you by the students and supervisors of the Business and Commercial firms at Northumbria University’s award winning Student Law Office.

Over the coming months, we’ll be telling you more about the work of the Student Law Office and what it is like to be a student involved in a clinical legal education programme. We’ll be providing you with some hints and practical tips about key areas of company, commercial and intellectual property law and posting any other information we think might be of interest.

We hope you enjoy reading and interacting with our blog. Please keep an eye out for future posts. We hope to start posting regularly from August 2014 onwards.