Trade Mark Attorneys and Services

A trade mark is a sign which, when used in the course of trade in respect of goods or services, can serve to distinguish one trader’s goods or services from those of other traders. Commonly, trade marks are in the form of a word, a device (logo) or a combination of the two. However, other “signs” such as the shape of a product or its container, sounds or even smells may be registered as trade marks.

Once a trade mark is used, “goodwill” can be generated in the trade mark and the trade mark can become a valuable business asset.

Commonly, trade marks are in the form of a word, a device (logo) or a combination of the two. However, other more unusual “signs” that can function as a trade mark, i.e. signs that are distinctive and can distinguish goods/services of one trader from others, can be registered as trade marks.  For example, the shape of a product or its container, sounds or even smells may be registered as trade marks, although this is less common than conventional trade marks.

In order for a trade mark registration to be obtained, the trade mark needs to be distinctive, non-descriptive of the goods or services or their geographical origin, and not excluded from registration due to being generic, deceptive, offensive, laudatory, illegal or immoral.

Registration of a trade mark provides the owner of the registration with the exclusive right to use the trade mark in respect of the goods or services for which the mark is registered. It also provides the owner with the right to take legal action against competitors who might, inadvertently or otherwise, infringe his registered trade mark rights by using the same or a similar trade mark on goods or services identical or similar to the goods or services covered by the registration.

If a trade mark is not registered but is used for a considerable period of time, the trade mark proprietor may have “common law” rights in the mark, which may enable the proprietor to protect their interest in the trade mark against unauthorized use. However, a legal action based on such common law rights, generally known as a “passing off” action, can be more difficult and costly to pursue than an action for infringement of a registered mark.

Therefore, it is generally recommended that trade mark registration is obtained for trade marks.

When thinking of a new trade mark to use, the aim should be to find a mark which is likely to be both protectable (i.e. capable of registration), and which is not in use or registered by other third parties.

To be registerable, the trade mark should ideally NOT be:

1. Directly descriptive of the goods or services or their geographical origin;
2. Words/terms which have become customary in the particular trade (generic);
3. Laudatory, offensive, illegal; and/or
4. Deceptive

It is useful to ask a trade mark attorney to perform a trade mark search for your proposed trade mark before you start to use or apply to register the same.

Once a trade mark has been registered, the trade mark protection generally lasts for an initial period of ten years from the date of application. At expiry of the initial ten year period, the registration can be renewed for further periods of ten years, without limit, on payment of a renewal fee.

In order to register a trade mark, an application needs to be filed at the Trade Mark Registry in the country in which you wish to obtain trade mark protection. The application needs to specify the trade mark and the goods or service for which the trade mark will be used. If the trade mark application is in respect of a logo, a representation of the logo will need to be provided.

Once an application for a trade mark registration has been made, the application is examined by the Trade Mark Authorities in order to ascertain whether the trade mark is acceptable for registration. In most cases, an examination report is issued by the Trade Mark Authorities within a few months from the filing date of the application. Any objections raised by the Authorities must be dealt with in order for registration to take place.

Once any objections have been overcome, the trade mark application will be published and any third parties can object to the trade mark. If no objections are raised during publication, or any objections raised are successfully overcome, the application will then proceed to registration.

If you wish to protect your trade mark in one or more foreign countries, this can be done in three different ways:

1. File a separate trade mark application in each country in which trade mark protection is required;
2. File a European Community trade mark application covering all the countries of the European Union;
3. File an International trade mark application under the “Madrid Protocol” designating a number of different countries;
4. File an OAPI and/or an ARIPO trade mark application covering multiple African countries as a single application.

If foreign trade mark protection is applied for within a six-month term from filing your first trade mark application, often called the “priority period”, then the foreign trade mark applications will be given the filing date on which your first trade mark application was made.

A trade mark attorney can advise you on the best options for obtaining trade mark protection in the specific countries of interest to you.

It typically takes approximately 5-12 months to obtain a trade mark registration in the UK, depending on whether any objections are raised against the trade mark application.

In order to obtain trade mark registration, official fees need to be paid to the trade mark authorities in whichever country or region trade mark protection is required. The amount of these official fees depends on the numbers of classes of goods or services for which the trade mark registration is applied for and the countries in which trade mark protection is required. A trade mark attorney can provide an indication of costs for obtaining trade mark registration once the above information has been obtained.