Trademarks are an increasingly common part of day to day commercial activity, so common indeed that many businesses routinely apply for them without fully understanding what rights it grants, and the full scope of the protection. This article will focus on the legal nature of a trademark and later articles will explain the applications process and the consideration criteria.
A legitimate monopoly
The clearest way to think of a trademark is as a state granted monopoly on the use of a distinctive sign that gives consumers valuable information. The policy justification from the state’s point of view is to protect consumers from misleading or false descriptions about the origin of the goods or services which they buy. The exact same exclusive right cannot be granted to two different people, and in the UK the Intellectual Property Office (IPO) is the statutory body which considers applications, resolves conflict between owners and applicants, and maintains the trademark registry. UK businesses also have the choice of registering an EU wide trademark with the Office for Harmonisation in the Internal Market, which is particularly useful if you are operating in other European markets.
The Trademark Act 1994 states a trademark is any sign which is
- capable of being represented graphically and
- capable of distinguishing goods or services of one undertaking from those of others.
In essence this means anything that is capable of distinguishing may be registered as long as it can be represented graphically. This can include words, logos, combinations of the two, names, shapes of goods, as well as tunes and gestures. Marks which are descriptive or generic will not be registered for lack of distinguishability.
The Act further stipulates that the mark must be in use or the applicant must have a bona fide intention to use it, making challenges of unused marks theoretically possible. The state is saying you can have a monopoly, but only if you use it or have an intention to, otherwise you are denying access to the market of another person who does have the intention and thus hindering trade.
A monopoly is however a monopoly and provided that your granted trademark is used the exact same mark should not be granted, and you can object to similar marks in which case it would be for the other applicant to evidence how their mark is distinguished from yours. It is this exclusivity that gives trademarks their commercial value: it gives the owner a unique position in the market place. Finally a trademark is a property right and you must protect it as if you were protecting your land.
If this interested you and you would like a confidential discussion on Trademarks please do contact us and we would be happy to assist.