The Trade Marks Act 1994- what do I need to know?

The Trade marks Act 1994 is the key piece of legislation in the UK in relation to trade marks. It covers all issues including registration, infringement, revocation, license and assignments.

However, as a business starting out, you may be wondering what exactly you need to be aware of in relation to the Act, both generally and if you are looking to start an application of registration.

First of all, infringement is a key area that you need to be wary of. Any logo or name you use for your new business may already be registered by another. Section 10 of the Trade Marks Act 1994 outlines the requirements. Any mark that is identical/similar to a mark already registered in identical/similar class of goods or services has the potential of infringing. Infringement carries a maximum sentence of 10 years imprisonment as well as an unlimited fine.

Therefore it is essential you make the relevant checks before you start trading to avoid an expensive lawsuit coming your way. If you are not looking to register your mark at all, a quick but broad search can be done through the UK Intellectual Property Office’s website can be done to indicate if any existing registrations are clearly similar to you. However if registration of your mark is on your agenda, a number of searches can be done on your behalf to get a better idea of any potential infringement claims.

The Trademarkroom can offer you a number of searches with differing levels of precision to prevent any infringement actions. These look at all the registered marks across the jurisdiction you are looking to register your mark in, which is normally the UK and the EU, to see if any would have implications in relation to both infringement and registration.

In addition, the key points in relation to registration are outlined in the Trade Marks Act 1994. When you are starting a business, a good way to secure your brand is through the registration of your trade mark. This is relatively inexpensive but there are a number of requirements outlined in 3 sections of the act to comply with. Section 1 gives a definition of a trade mark as ‘a sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings’. This gives some guidance of how the mark should be formatted. In addition, under Sections 3 and 5 the absolute and relative grounds of refusal are outlined. The absolute grounds are in relation to any procedural reason a mark should not be registered, for example a lack of distinctiveness or the mark is too descriptive of the goods. The relative grounds for refusal are more concerned with existing marks and whether the registration of your mark will be affected by one already registered. The provisions mirror those previously explained in section 10.

As a start up business, these are the key areas outlined in the Trade Marks Act 1994 that you need to focus on. Other areas such as assignments and licenses are of more interest when your mark is established.

If you need any advice or guidance, get in touch with Jane at The Trademarkroom

By Ellis Sweetenham