TRADE MARKS

Imitation is the sincerest form of flattery…but not where trade marks are concerned. It is vital to protect the commercial value of a trade mark and/or brand name


WHAT IS A TRADE MARK?

In the United Kingdom a trade mark is a sign used in the course of trade in relation to goods or services and serves to distinguish the goods or services of one trader from those of other traders. A trade mark can consist of a word, name, logo or other distinctive characteristic such as colour, smell, sound or shape.


REGISTRATION – PROTECTION IN THE UNITED KINGDOM

Although a trader can obtain common law rights in a mark through use without registration, it can be costly and time consuming to assert those rights against a third party. Registration of a trade mark is the most cost effective way of protection. It is a public record of the trader’s claim to the exclusive use of the mark and entitles him to commence proceedings for trade mark infringement against a third party who (inadvertently or otherwise) uses the same or similar trade mark on the same or similar goods or services covered by the registration.

Once registered, trade mark rights are backdated to the application date. A registration will last for an initial period of 10 years from the application date and can be renewed indefinitely for 10 year periods.


EUROPEAN COMMUNITY

A successful application in the United Kingdom will give protection in this country only. If the mark is to be used in the European Community then the Community registration system provides protection of a trade mark throughout the 15 member countries by filing a single application at the Community Trade Marks Office. It is the most cost effective way of obtaining rights in a mark throughout the European Community.


COUNTRIES NOT COVERED BY THE EUROPEAN COMMUNITY OR THE MADRID PROTOCOL

A separate application is necessary where protection is required for those countries not covered by either the European Community or the Madrid Protocol Systems.

In some countries trade marks rights may only be obtained through registration in that country. Use of an unregistered mark cannot be relied on to protect trade mark rights in that country. The requirements for registration in most cases are similar to those of the United Kingdom.

TRADE MARK SEARCHES

Before using a trade mark or filing an application to register a mark it is advisable to conduct a search of the relevant trade mark register to ensure that there are no existing claims to the same or confusingly similar mark for the goods or services of interest. Searches can be conducted of the trade marks register in the United Kingdom, at the European Community Trade Mark Office or the national office of any country throughout the world. Advice will be given on whether any of the marks located are likely to prevent the use or registration of the mark concerned.

TRADE MARK WATCHING

This service will enable you to protect your valuable trade mark rights against encroachment by third parties registering the same or similar trade marks.

The European Community Office and the national offices of some countries will not refuse an application to register a trade mark even if it conflicts with a prior application or registration. It is up to the owner of an earlier application or registration to object to a conflicting mark being registered by opposing that application during the statutory opposition period.

We can keep a watch on trade marks registers in the United Kingdom, the European Community or the national offices of individual countries throughout the world. You will be informed of any trade marks we consider are likely to conflict with your registered mark. We will also advise you of the appropriate course of action to take in order to protect your trade mark rights.

OTHER SERVICES PROVIDED

· Advice – relating to all aspects of use and registration of trade marks
· Prosecution – dealing with objections/oppositions raised by Registry or third parties
· Licensing – permitting other parties to use a trade mark
· Assignment – transfer of a trade mark
· Infringement – unauthorised use of a trade mark by another party
· Renewal – extension of trade mark protection



For more information contact Alister Gillies on 0131 200 7124 or by email alister_gillies@oswalds.co.uk