 What is a Trademark? A trademark is something that distinguishes your products from others within the market.
A trademark can be: - A word or name i.e. McChicken Sandwich (McDonald's)
- A logo (or symbol) i.e. Nike's stylish 'tick'
- A slogan i.e. "Vorsprung durch Technik" (Audi)
- A design i.e. the classic glass coca-cola bottle
In certain cases, this can be extended to… - A colour scheme i.e. Coca Cola’s red and white
- A smell i.e. A perfume or aftershave
- A sound i.e. The ‘Intel Inside’ jingle
A registered trademark gives the business exclusive rights to use the trademark and may lawfully prosecute any parties that use the same trademark in the future.
However, owners of trademarks that have not been registered can still prosecute offenders if there is a public claim to the trademark. However, the outcome of legal action will be largely dependant on the popularity of the trademark and its power to distinguish.
Service Marks
A service mark is exactly the same as a trade mark with the exception that it distinguishes your services from others in the market. The same rules and principles apply to a service mark as they do to a trademark. For the sake of repeating, the article will consider trademarks to include service marks unless for any reason they need to be addressed separately.
Trade mark or Trade name? A trade name is slightly different to a trademark. A trade name refers to the name of the business or company, where a trademark refers to products/services. However, a trade name can be used as a trademark if it is used to help distinguish between products and services, for example 'HSBC Savings Account'.
Qualifying as a Trademark Trademarks cannot be freely registered and will be investigated thoroughly before registration is approved. To qualify for registration the trademark must: - Be distinctive and not be a commonly used word
- Be available for use i.e. not used or registered by another party *
- Be lawful **
* It is possible for two identical trademarks to co-exist if the trademarks are used for two completely different products/services. ** The trademark must be relevant to the business, product or service i.e. not falsely describe the product, etc.
What Does ®, ™ and SM Mean and When Can I Use Them?
A party can display ™ next to a trademark that has not been registered. However, there must be a public claim to the trademark. A party can display SM next to a service mark that has not been registered. However, there must be a public claim to the service mark. A party can display ® next to a trademark or service mark that has been legally registered. This symbol will inform people that you have the right to take legal action if the trademark or service mark is violated. False claims to a registered mark - using the ® with non-registered marks - is seen as an act of fraud and offenders will be prosecuted.
How to Register a Trademark To apply for registration of a trademark, you must consult the Trademark registry (web address below) that will process your application (on approval). The length of time that it will take to process your application will depend on the number of trademarks that you want to protect and their complexity (they may fringe on issues that may take time to research). In some cases, it has taken up to two years to protect a trademark, but commonly it should take no longer than one year. A trademark registration is only valid in the country where you originally registered. Therefore, if you require extending your trademark overseas, you must also register in the specific country(s). However, this again will be dependant on whether the trademark has not already been used and that it doesn't infringe on any laws (each country may have a different legal system). The costs for registering a single trademark are around £200. This is for the trademark to cover one class of product/service. For each additional class, there is a charge of £50. Renewal of trademark registrations is required after 10 years - the above costs will again have to be paid.
Is My Trademark Already Taken? With millions of businesses out there, you would be right in wondering if someone else has already taken the trademark you wish to register. Happily, you can now do an instant online search, and save yourself time and money if it has already been taken; although if the two products/services are very different you may both be allowed to register it. How to Search: To search, go to the IPO site (linked below). Simply choose Trademarks from the left hand menu, and then choose “Find trade marks”. You can then search by number, proprietor (the company that registered it), or by the text in the trademark. Search online at the Intellectual Property Office here.
More Information This article has covered the basic elements of trademarks. However this area is very detailed and carries a large amount of legislation. It is therefore important to read further and consult expert advice before you act on any information. Read more at the Intellectual Property Office on-line
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