UK Trade Marks A Brief Guide for Clients

Transcription

1 UK Trade Marks A Brief Guide for Clients March 2016 v

2 Obtaining Trade Marks in the United Kingdom A summary of the procedures and costs involved in obtaining a trade mark in the UK What is a trade mark? A trade mark is any sign or symbol that can distinguish the goods and/or services of one trader from those of another. Essentially, a trade mark is a badge of origin, and is used so that customers can recognise the goods or services of a particular trader. Hence, the trade mark contributes to the commercial value of the goods or services to which it is applied, and increases marketability. A trade mark may be a word (eg Nike), a group of words (eg Marks & Spencer), a logo (eg the Adidas stripes), a phrase or slogan (eg I can t believe it s not butter!), pictures, or any combination of these. Who registers trade marks? A trade mark is registered by a national Trade Marks Registry, such as the UK Intellectual Property Office ( or by a regional Trade Marks Registry that does the work for a number of countries, such as the European Union Intellectual Property Office (EUIPO), which is responsible for registering European Union Trade Marks (oami.europa.eu). In order to obtain a registered trade mark, normally one would initially file a UK trade mark application or a European Union Trade Mark (EUTM) application, which is referred to as being pending until it is registered or refused by the Trade Mark Registry. Foreign trade mark protection is also possible through Trade Mark Registries in overseas countries. What does a registered UK trade mark do? A registered trade mark provides the owner with powerful protection for their trade mark. Once accepted by a Trade Marks Registry, a trade mark is registered for an initial period of ten years. However, the protection may be extended for an unlimited period, provided that renewal fees are paid every ten years. If the renewal fees are not paid, the registration lapses. Furthermore, if a registered trade mark is not used commercially for a continuous period of five years, then it may be attacked and invalidated by a competitor, and removed from the register. Therefore, there is a strong incentive for owners to use their trade marks.

3 2 What kind of protection does a registered UK trade mark offer? The owner of a registered trade mark has the legal right to stop a third party from commercially using the identical mark for goods or services that are identical, or similar, to those in respect of which the trade mark has been registered. In addition, it is possible to stop a third party from using a confusingly similar trade mark for similar goods/services. The owner can prevent the third party from affixing the registered trade mark to goods or packaging; selling or offering to sell goods or services using the registered trade mark; importing or exporting goods using the trade mark; or using the trade mark on business papers, or in advertising. Any of these actions constitutes registered trade mark infringement. Trade mark rights are usually enforced in a Court, which has the authority to stop trade mark infringement. What rights does a trade mark owner have? A trade mark owner has the right to decide who may, or may not, use the registered trade mark. The trade mark owner may give permission to third parties to use the registered trade mark on mutually agreed terms. This is called licensing the trade mark, and may be used to generate revenue via licensing fees. The patent owner may also sell the registered trade mark to someone else, who will then become the new owner of the registration. This is called assigning the trade mark. What is the difference between the symbols TM and? You can use the symbol after your trade mark, whether the mark is registered or not. We advise you to do this, because it clearly notifies third parties that you are using the mark as a trade mark, and are fully aware of your trade mark rights (registered or unregistered). For example, you could mark either a registered or an unregistered trade mark as follows:- Trade Mark is a trade mark of [Your name]. However, once your trade mark is registered, you can then use the registered symbol,. We also recommend that you do this, as it notifies third parties that your mark is registered, and may therefore act as a deterrent. For example, you could mark your registered trade mark as follows:- Trade Mark is a registered trade mark of [Your name]. Please note that it is an offence to use the symbol if your trade mark is not registered.

4 3 What are the requirements for a trade mark to be registered in the UK? In order to be registerable in the UK, your trade mark must be: (i) distinctive (ie not descriptive) for the goods or services which you are applying to register it for; (ii) not deceptive, or contrary to law or morality; and (iii) not confusingly similar or identical to an earlier mark for the same or similar goods or services, unless the owner of the earlier mark consents to registration of your trade mark. We can advise you whether or not your trade mark meets requirements (i) and (ii) above. In order to advise whether there is a risk that your trade mark would not meet requirement (iii), it is necessary to carry out some preliminary searches. Should I conduct any trade mark searches? Yes. Trade mark searching is important, as it can save you a lot of time, effort and money by highlighting any potential problems you may encounter before you market products with your proposed trade mark in the UK. It is better to find out early on in your business whether you can use and register the mark you have chosen. There are two key considerations that should be borne in mind when wishing to use and register a trade mark. The first is whether anyone else has already registered either the identical, or a confusingly similar, trade mark at the UK Trade Marks Registry, in respect of identical or confusingly similar goods/services. If they have, then your trade mark application may be opposed by the owner of that earlier registration, and consequently may not be accepted for registration by the Trade Marks Registry. Therefore, before filing a trade mark application at the UK Trade Marks Registry, we recommend that at least an initial identical trade mark check is conducted to assess whether or not the identical trade mark has already been registered (or if an identical trade mark application has already been filed) for identical or confusingly similar goods/services. We can conduct an identical trade mark check in-house from about 80 plus VAT. If such a check locates the identical mark on the register, then in most circumstances, we will advise you to choose an alternative mark. The identical check therefore acts as a cost-effective screen, and could potentially save you the cost of filing a trade mark application, which would have little or no chance of going through to registration due to an earlier mark. Please note however that identical checks are of limited use, because they only check for the identical spelling of the trade mark (ie exactly the same mark), and would not find alternative spellings or variants of your mark, which could still prevent successful registration. The second consideration is whether anyone else has already registered, or applied to register, an earlier trade mark that may present you with a risk of infringement if you use your trade mark in the UK. Therefore, before adopting or using any trade mark in the UK, we recommend that a detailed

5 4 infringement clearance search is carried out before proceeding, in order to highlight any potential problems. We would normally employ the services of a professional search company in order to locate potentially problematic registered trade marks or trade mark applications. The search is more involved than an identical check, and looks for phonetic equivalents and alternative spelling variants of your mark. We would then review the search results located by the search company ourselves, and advise you if any of the located marks may present you with an infringement risk. Normally, we will categorise marks found by the search as low, medium or high risk. The costs of full clearance searches vary widely depending on the trade mark and the goods/services covered, but will normally be plus VAT for word marks. Clearance searches for trade marks consisting of a logo are more time-consuming, and so may cost plus VAT. The benefit of conducting a full clearance search is two-fold. First, it should highlight at an early stage any potential infringement problems should you adopt your proposed trade mark. This can save a considerable amount of wasted costs and effort, for example in designing, marketing, and promoting your goods or services, in cases where a conflicting mark is already on the register. Secondly, it should also indicate the chances of successfully registering the trade mark at the UK Trade Marks Registry. Accordingly, in cases where a clearance search is carried out, there is no need to conduct an identical trade mark check. In some cases, where a potentially problematic mark has been located either by an identical trade mark check or by a full clearance search, it may be advisable to contact the proprietor of the earlier trade mark application or registration, in an attempt to check whether the earlier mark has actually been used or not, and/or to obtain consent so that you can register, or at least use, your mark without infringing the earlier mark. We can assist you by contacting proprietors of any earlier trade marks found by searches. How do I register a UK trade mark? The first step in registering a registered trade mark is to prepare a list of all of the goods and/or services in connection with which the mark is to be used. The trade mark system includes a detailed classification system consisting of 45 classes, each covering different groups of goods and services. For example, class 25 covers clothing, footwear, and headgear, class 9 covers electronic equipment such as televisions, stereo equipment, and CDs, and class 16 covers stationery items, such as pens and paper, and so on. It is important to ensure that the goods and services to which the trade mark will be applied are assigned to the correct class, and to ensure that the scope of protection afforded by the eventual registration is not unnecessarily restricted.

6 5 In many cases, a trade mark application will include goods or services that fall into more than one class, and often many classes. Please note that it is not possible to add extra classes of goods/services to a pending trade mark application after it has been filed. Therefore, should you wish to extend protection of the trade mark with additional goods/services, these goods/services have to be covered by a brand new application. Therefore, we recommend that the initial trade mark application should include any goods/services that you think the mark may eventually be applied to, at least in the short-term future. However, it should be borne in mind that the mark must be used for all of the goods/services for which it is registered, since otherwise the registration may be attacked by a competitor, and may be invalidated either in full or in part. Once we have agreed which goods/services should be covered, the trade mark application is filed at the UK Trade Marks Registry. For a typical case, the cost for filing an application for one trade mark covering one class of goods/services is 680 plus VAT, including the official fees and our charges. A further charge of 110 plus VAT is payable for each additional class of goods/services. In more complicated cases, where additional professional time is required to finalise the list of goods/services, an additional charge of 100 to 250 plus VAT may be payable. The next stage of the application procedure is for the trade mark to be examined by the UK Trade Marks Registry. The Registry assesses whether the mark is sufficiently distinctive to be registered, and checks whether there are any conflicting earlier registrations or pending applications on the register. In the event that the UK Trade Marks Registry identifies a conflicting earlier registration, the owner of that registration may be notified of your application, and informed of the opportunity to oppose your application, as discussed in more detail below. If no objections are raised against the application, the Registry issues an official notification informing us that the mark has been accepted. The application is then officially published in the UK Trade Marks Journal. Details of the accepted trade mark application are published, and in the following two months anyone may file an opposition against the application. We will advise you of the procedure for responding to an opposition against your trade mark application should the need arise. However, the cost of dealing with an opposition can vary between 500 and 2000 plus VAT, or more for complicated cases. It is impossible to predict with certainty whether or not a third party will oppose a trade mark application. However, searches carried out before an application is filed may highlight potential problems, and may provide an indication as to whether an opposition could be filed against your application. At the end of the opposition, the mark will either be maintained or rejected, either in full or in part, in which case the mark may be registered in respect of a limited range of goods/services.

7 6 If no substantial objections are raised by the Trade Marks Registry and no oppositions are filed against the application by interested parties, there would be no further charges for our services in guiding the application to registration. The post-filing charges would be higher when an opposition is filed, and/or if the Registry raises an objection against the application during the examination process, for example on the grounds that the mark is not sufficiently distinctive to qualify for registration. In such a case, an Examination Report would issue, setting out the objection(s). We would be given an opportunity to overcome the objections raised, and the costs would vary between cases depending on the nature of the objections. For a typical case, the cost for responding to the Examination Report may be plus VAT, and for a more complicated case, where the objections are more substantial, the cost may be plus VAT, or more. Once all of the objections have been met, the Registry would inform us that the mark has been accepted, after which the application is then published in the UK Trade Marks Journal. If no opposition is filed, at the end of the two month opposition period, the mark proceeds to registration, and the UK Trade Marks Registry issues a registration certificate. The trade mark is registered for an initial period of ten years. Provided that renewal fees are paid to the UK Trade Marks Registry every ten years, the trade mark will remain registered indefinitely. You can now mark your trade mark with the symbol. However, please note that if a trade mark is not used for a period of five years, it may be invalidated by a competitor, and removed from the register. Therefore, it is important for you to continue to use your trade mark after registration. What are trade mark watches? We recommend that trade mark owners police their trade mark rights. For this reason, we provide regular trade mark watching services for clients who wish to keep themselves informed of any attempt by a competitor to register a trade mark that may be either identical or confusingly similar to their own registered trade mark. If such a conflicting application were to be successfully registered, it could diminish your trade marks rights, and seriously affect your business. In cases where a potentially conflicting trade mark application has been filed, the watch enables the trade mark owner to contact the applicant of the conflicting mark in order to come to some agreement, for example, by requesting that the later application be withdrawn or restricted. Trade mark owners also have the option of filing a formal opposition against subsequently filed trade marks, if they believe that there is a likelihood of confusion by the customer. We can help you by filing trade mark oppositions against competing marks on the register.

8 7 The cost of maintaining a basic watch of the UK Register for one year for a single mark covering up to three classes is from about 100 plus VAT. The cost of maintaining a watch of the European Union Trade Marks Register is from about 250 plus VAT per year. The cost of maintaining a worldwide watch will be from about 300 plus VAT per year. The watch results will be forwarded to you without comment, and additional charges would arise only if you request advice regarding enforcement or oppositions. In addition to watches that we can perform on your behalf, we recommend that you closely monitor your competitors' activities yourself to see if they use any trade marks that are identical or confusingly similar to your mark. It is possible to enforce your trade mark rights against such infringing activities. In addition, in some cases, it is possible for third parties to develop their own unregistered trade mark rights in the mark, and it is important to prevent this from occurring, if possible, using either your own registered trade mark, or your own unregistered trade mark rights. What are unregistered trade mark rights? A registered trade mark provides a strong tool to prevent people from using your mark without your permission. However, in cases where a trade mark has been actively used for a considerable period of time (normally, at least 5 years), it is possible that the mark may also have accrued unregistered trade mark rights under the law of Passing off. Unregistered trade mark rights can be used to prevent a third party from passing their goods off as your own, provided you can clearly demonstrate to a Court that (i) there is goodwill in your mark; (ii) there has been a misrepresentation by a third party; and (iii) there has been actual damage to your business. To demonstrate unregistered passing off rights, it is necessary to provide extensive evidence to show the goodwill in your mark, and this can be difficult. Unregistered rights are therefore not as strong as registered rights, and we would always recommend that you seek to register to your mark whenever possible. However, we can advise you as to whether or not your unregistered trade mark is also protected by passing off rights. How do I enforce my registered and unregistered trade mark rights? If someone infringes your registered or unregistered trade mark rights, you may request the UK High Court to: (i) grant an injunction to stop the infringer from using your trade mark; (ii) award damages in respect of financial losses resulting from the infringing activity; and (iii) order the infringer to pay a proportion of the legal costs incurred.

9 8 There is generally no need to prove that your trade mark has a reputation or goodwill, and there is frequently no need, in a Court action, to present any evidence that you have used the mark. This is in stark contrast to enforcing unregistered trade mark or passing off rights. How do I protect my trade mark overseas? There are three main ways in which trade mark protection may be obtained overseas. These are:- a) separate national trade mark applications in each country required; b) a European Union Trade Mark (EUTM) application, which covers all member states of the EU; and c) an international trade mark application using the Madrid Protocol. Unlike patent and design protection, there is no strict requirement for a trade mark to be confidential when filing a trade mark application. Indeed, many trade mark applications are filed after many years of commercial use. However, by filing a foreign trade mark application within 6 months from the UK filing date, it is possible to back-date the foreign application to this so-called priority date, and this can provide some advantages. For more information about trade mark protection overseas, please refer to our leaflet Foreign Trade Mark Protection. How can AdamsonJones help? We would be happy to discuss your trade marks and logos and advise you concerning trade mark protection in the UK and overseas. Please feel free to contact us to arrange a meeting. NB: We have endeavoured to ensure that the information in this note is accurate and up-to-date. However, this note is for general guidance only, and is not a substitute for professional advice.