This is a popular question that we’re often asked so we hope the below answers your question! If you’ve read to the end of the article and it still doesn’t, please contact us.
A quick overview of Registered Trade Marks in the UK…
A registered trade mark provides the owner with the legal exclusivity to the particular name, logo, slogan, shape, sign or sound clip in the territory that the trade mark is registered in. This provides the owner with the ability to legally control who can and cannot use the registered trade mark without permission. However, because this type of right has the potential to be very strong and far reaching, there are limitations on what you can and can’t get away with trade marking.
In order to successfully obtain a registered trade mark in the UK, you must be able to fulfil the following 3 requirements in accordance with the Trade Marks Act 1994:
- The trade mark must not be too descriptive of the goods or services that are being used with the trade mark. Trying to obtain a trade mark for the name ‘Tasty Cakes’ for a bakery business is a good example of a name that is too descriptive. ‘eBay’ ‘Google’ and ‘Amazon’ are good examples of names that are not too descriptive.
- The trade mark must not be a name, shape, sign, logo or sound that is commonly used in the market place. ‘Watertight Plumbing’ for a plumbing business is a good example of a name commonly used to describe the effect of the service whereas ‘Bosch’ is not (although we know it to be a popular brand in the industry).
- The trade mark must not be confusingly similar or identical to an earlier registered trade mark in the same or similar industry.
Can someone else trade mark my name?
The short answer is yes. But there is a remedy.
To allow someone else to deliberately trade mark the name of your business because they’ve recognised you haven’t trade marked it yet would be unfair both legally and commercially. The law counters this by allowing a trade mark that has been registered in this manner to be invalidated if it can be proved that the application was made in ‘bad faith’. Note that this type of action is not always straight forwards so it’s a good idea to register a trade mark for names, logos, slogans and other applicable trade marks that are essential and distinctive features of your business.
If you think someone else is using your trade mark (registered or unregistered) it is important to obtain advice from an expert sooner rather than later.
What protection do I have if I haven’t got a trade mark?
If you haven’t got a registered trade mark, it’s not necessarily the end of the world as there is such a thing as unregistered trade mark rights.
The common law of ‘passing off’ offers protection to those who have an unregistered trade mark with a reputation and goodwill in the marketplace that is being used by someone else in the same or similar market without permission. To establish a claim for passing off, you will need to demonstrate:
- Goodwill (the benefit and advantage of the good name, reputation and connection of a business).
- Misrepresentation (made by a trader in the course of trade which has led to confusion or a likelihood of confusion in the mind of a purchaser).
- Damage (establishing actual or likely financial loss).
It is much more onerous to bring a successful claim for passing off compared to enforcing a registered trade mark right, but if the unregistered trade mark in question fulfils the above 3 requirements then the likelihood of a successful claim is much higher.
Should I consider a registered trade mark for my business?
Registered trade marks are definitely worth having in place for names, slogans and logos that are unique and distinctive to your business. They award you the statutory right to enforce them and it’s very clear when the right was established and the extent of the rights thanks to the trade mark being published on a register. Unregistered trade marks do not carry the same level of protection and instead rely on much more difficult measures of protection (passing off).
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Ryan has helped a vast number of businesses protect and control their intellectual property as well as drafting and advising on consumer and commercial contracts.
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