How can I exploit my trade mark?

The definition of a trade mark is defined in section 1(1) of the Trade Mark Act 1994.

It refers to ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.’

One only needs to look at successful global brands such as Apple, McDonalds, Estée Lauder Cosmetic Ltd and Amazon.com to see there is great commercial value in capitalising on a company’s unique traits. When this is done effectively through the use of trade marks, a company not only has another marketing tool, but it has started taking control of how it is recognised, its reputation and how it chooses to sell. In the Estée Lauder cosmetics v Fragrance counter Inc, Estée Lauder Cosmetics (EL) commenced proceedings against Fragrance Counter Inc (FC) and the internet company Excite. EL had stated that FC and Excite had infringed its German trade marks. The appellant judge decided that FC had created an objectively false impression that EL had given it the right to distribute the products through a license.

No matter the size of the business, it is important to seek legal help and register trade marks. This not only gives intellectual property better protection under UK law, but it demonstrates an understanding of the intrinsic value it possesses in a business. As a result, many companies view trade marks as an effective way of protecting their brand.

Section 10(1) of the Trade Mark Act 1994 states that an infringement of a trade mark can occur if ‘a likelihood of confusion exists on the part of the public, which includes the likelihood of association with the trade mark.’ In Calvin Klein Trade Mark Trust v OHIM, it was held that the trade initials “CK” present in the defendant’s trade mark (CK CREACIONES KENNYA) was not a dominant part of it. There had to be a global assessment of the likelihood of confusion based on the overall visual, aural and conceptual similarity. The court decided that if the two initials were solely placed in front of public, there would be no confusion about it being the trade mark for Calvin Klein.

Recent case law expands on the notion of the likelihood of causing global confusion. Cases such as Sabel BV v Puma AG and Lloyd Schufabric Meyer v Klinjsen Handel B.V Case have aided in the assessment of how the average consumer views a trade mark. It was decided that trade marks are usually viewed as a whole and are not analysed in its various details. Thus the consumer is stuck with the imperfect memory of the mark, with only the key features still present in the mind. As a result, competition between brands is not hindered, as they can share similar but distinct trade marks without causing infringement.

The lesson to be learned through legislation and case law is that trade marks need to be protected in order to be fully utilised. They can be an essential tool to expanding a company and a cost-effective form of marketing. Securing a valuable trade mark is simultaneous with securing a valuable reputation.

by

Fatima Amedu