A basic guide to UK, EU and International trade marks.

What is a trade mark?

Trade marks are a type of intangible property protection that allows the owner to monopolize the use of the mark on any particular goods. Trade marks protect against unfair competition, forgery and safeguard the goodwill of a business. They are usually in the form of:  words; names; symbols; sounds; and colours to help distinguish their product from that of a competitor. An example of a trade mark would include the shade of purple used on Cadbury chocolate products as well as the name Cadbury. Businesses and individuals can register trade marks. Trade marks must be registered to be protected by trade mark law but a company may be able to bring a claim of passing off provided they can show the goodwill associated with their company and confusion with the competitor’s brand.

Trade marks registered in the UK.

In order to register a trade mark in the UK, an application should be filed with the UK’s Intellectual Property Office (the IPO), based in Newport. The application must include: a request for registration and the applicants name and address; a statement of the goods or services for which the mark is to be registered; a representation of the mark; and a declaration stating that the mark is being used or an intention to use the mark exists. It must also define what goods and services require protection which in turn determines the scope of the rights the trade mark will have. This includes classification of the goods and services contrary to section 34 of the Trade Mark Act 1994. Representation of the mark must also be submitted with the application.

After the application has been submitted a search will be carried out on using the trade mark register to see if there is a conflict, if there isn’t the application will be examined in detail. If no issues arise it will then be published in the Trade Mark Journal in order for third parties to observe, comment and if necessary oppose for a specific reason. If the application is not opposed within three months it will be registered and the new property owner will receive a confirmatory certificate. The application can be periodically renewed so that the owner can maintain control of the trade mark.

Trade marks registered in the EU.

A Community Trade Mark (CTM) is the registration of a single trade mark which is valid in all countries of the European Union (EU). Registration similar to the UK’s system requires the filling of an application. The application should be sent to: the Office for Harmonization in the Internal Market (OHIM) in Alicante, Spain; or to the applicants head intellectual property office in their member state. EU nationals and nationals of countries who have signed the Paris Convention for the Protection of Industrial Property are eligible to apply for a CTM. Once the application has been filed it is then examined. If the application is accepted a search will be carried out against OHIM’s database for trade marks. If success ensues it will be published in part A of the Community Trade Marks Bulletin to allow for observations, comments and potential oppositions. If no issues arise within 26 weeks it will be published in part B of the Community Trade Marks Bulletin and the applicant will receive a confirmatory certificate.

Trade marks registered internationally.

International trade marks are governed by the World Intellectual Property Office (WIPO) If you own a trade mark in the UK you can protect it abroad by applying for an international trade mark under a procedure called the Madrid system. This is a multi-national system based on two international treaties – the Madrid Agreement and the Madrid Protocol and run by the World Intellectual Property Organization (WIPO) which is based in Geneva, Switzerland. Protection is only provided in countries party to the Protocol. Registration subsists of a single application, in a single language for a single fee in the countries nominated by the applicant. It is a faster and less expensive method of international trade mark protection. Registration requires the applicant to provide details such as: full name; address; country and state of incorporation of the applicant (if applicable); the trade mark itself; a representation of the trade mark; an indication of the goods and services sold or to be sold under the trade mark; countries nominated for the trade mark to be protected in; and details of an application on which Convention priority is to be claimed. A person can apply for an international trade mark if: a national of a member country of the Protocol; a resident of a member country of the Protocol; or a person or organisation with business premises in one of the member countries of the Protocol.

When WIPO register your mark, it does not mean that it is protected in all the countries or regions that you have designated. WIPO will tell those countries, and it will be up to each of them to examine your mark under their own trade mark laws. They must tell WIPO of any problems within set time limits, and WIPO will send you a copy of their letter. If a country does not object to your application within the set time limits, your mark will be protected in that country.

Rachel Pellatt. Southampton Solent Law Student