Trade marks and advertising

What is a trade mark?

Does a trade mark have to be registered?

What can I register as a trade mark?

Where do I register a trade mark?

What should I do before I register a trade mark?

If I don't use a registered trade mark, can I lose the registration?

How long does it take to get a trade mark registered?

Does having a pending application to register a mark give me any rights?

How long does a trade mark registration last?

How is a registered trade mark infringed?

Who can sue for trade mark infringement?

What defences are available to an infringement action?

Can I use my competitor's trade mark in comparative advertising?

Do I need to protect my trade mark with the ® symbol, once it has been registered?

What does "TM" mean against a trade mark?

What happens if someone infringes a registered trade mark?

When are trade mark rights "exhausted"?

What is a trade mark?

A trade mark is a "badge" of trade origin. It distinguishes the goods or services of one trader from those of another. A trade mark can be words, logos and 3D shapes. It is also possible for sounds and smells to be trade marks.

Does a trade mark have to be registered?

No, but registration will offer the best protection. An unregistered trade mark may be protected by the law of passing off and, if it is a logo, possibly by copyright.

What can I register as a trade mark?

Any distinctive "sign" capable of being represented graphically, e.g. a musical jingle, a container shape, a phrase used as a strapline, sequences of initials shown by extended use to have become distinctive, logos and coined (e.g. Kodak) or actual words.

Where do I register a trade mark?

A trade mark can be registered with the UK Trade Marks Register. It is also possible to obtain protection throughout the EU by registering a trade mark as a Community Trade Mark or "CTM". There are also other "one-stop" ways of protecting a mark internationally. Commercially, you should consider registering a trade mark in every country where you are contemplating using a brand over the next 5 years.

What should I do before I register a trade mark?

First of all it is advisable to organise a search of the UK Trade Marks Register, the CTM register and any other relevant country's trade mark register – to check that nobody has already got a registration or a pending application in respect of the same or a closely similar mark. Next, you must decide for which of the 42 classes of goods and services (called the Nice classification), you want to register the mark.  See the 42 classes attached. The more classes you register for the greater the cost in government filing and renewal fees.

How long does it take to get a trade mark registered?

These days in the UK anything between 3 and 12 months, and it could be more if there are objections to the application, proceedings and hearings on points of dispute.

Does having a pending application to register a mark give me any rights?

No, but if and when a mark does get on to the register it will be regarded as having been registered from the date the application papers were first filed.

If I don't use a registered trade mark, can I lose the registration?

Yes, after 5 years non-use.

How long does a trade mark registration last?

A UK trade mark registration initially lasts 10 years.  The registration may be renewed at the end of the initial 10 year period and thereafter every 10 years. If a registration is not renewed, then the trade mark is removed from the Register.

How is a registered trade mark infringed?

The use by an advertiser of another company's trade mark may result in the advertiser being sued for trade mark infringement. Trade mark infringement may also occur where an advertiser adopts a trade mark confusingly similar to someone else's. A trade mark may be infringed in writing, graphically or aurally.

Who can sue for trade mark infringement?

The owner of the registered trade mark (or its assignee) can sue for infringement. An exclusive licensee can sometimes sue as well.

What defences are available to an infringement action?

There are a number of defences to an infringement action, including where the mark is used to describe the kind, quality, purpose and origin of the goods or services, and where it is used because it is a person's own name, provided that in both of these cases such use is in accordance with honest business practices.  Consideration should also be given to an argument that the registered trade mark is invalid (for example, due to non-use). Comparative advertising is also permitted if certain conditions are met (see below).

Can I use my competitor's trade mark in comparative advertising?

Broadly, yes, although if the competitor's mark is a registered trade mark you will infringe it if the advertisement is significantly misleading. See Comparative Advertising FAQs for more information.

Do I need to protect my trade mark with the ® symbol once it has been registered?

Once a trade mark has been registered, the ® symbol may be used to notify others that the mark has been registered.  However, it is not necessary to do so to maintain protection. Remember also that using the ® symbol in the UK in respect of a trade mark that has not been registered is a criminal offence.

What does "TM" mean against a trade mark?

It means that the trade mark is a brand which for whatever reason is not a registered trade mark in the UK.  It is not obligatory to use "TM", but it is a useful way of telling the world that you regard a trade mark as your brand.

What happens if someone infringes a registered trade mark?

Provided none of the defences apply and the registered trade mark is valid, the trade mark owner will be entitled to damages (or an account of the defendant's profits), an order for delivery up of the offending articles (in other words, the goods bearing the trade mark) and an injunction restraining further infringement. An injunction may result in an infringing advertising campaign being stopped.

When are trade mark rights "exhausted"?

Once goods have been put on the market in the European Economic Area (EEA) under a trade mark (either by the trade mark owner or with his consent), the rights of the trade mark owner are said to have been "exhausted", meaning that he cannot prevent further dealings in the goods.

Della Burnside
© Osborne Clarke 1999.

International Nice Classification of Goods and Services

Goods

Class 1. Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins, unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.

Class 2. Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.

Class 3. Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.

Class 4. Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles, wicks.

Class 5. Pharmaceutical, veterinary and sanitary preparations; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.

Class 6. Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; non-electric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.

Class 7. Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements; incubators for eggs.

Class 8. Hand tools and implements (hand operated); cutlery, side arms; razors.

Class 9. Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.

Class 10. Surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth; orthopaedic articles; suture materials.

Class 11. Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply and sanitary purposes.

Class 12. Vehicles; apparatus for locomotion by land, air or water.

Class 13. Firearms; ammunition and projectiles; explosives; fireworks.

Class 14. Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes, jewellery, precious stones; horological and chronometric instruments.

Class 15. Musical instruments.

Class 16. Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists' materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); playing cards; printers' type; printing blocks.

Class 17. Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes, plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.

Class 18. Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides, trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.

Class 19. Building materials (non-metallic); non-metallic rigid pipes for building; asphalt, pitch and bitumen; non-metallic transportable buildings; monuments, not of metal.

Class 20. Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.

Class 21. Household or kitchen utensils and containers (not of precious metal or coated therewith); combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes, steelwool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.

Class 22. Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.

Class 23. Yarns and threads, for textile use.

Class 24. Textiles and textile goods, not included in other classes; bed and table covers.

Class 25. Clothing, footwear, headgear;

Class 26. Lace and embroidery, ribbons and braids; buttons, hooks and eyes, pins and needles; artificial flowers.

Class 27. Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors, wall hangings (non-textile).

Class 28. Games and playthings, gymnastic and sporting articles not included in other classes; decorations for Christmas trees.

Class 29. Meat, fish, poultry and game; meat extracts; preserved, dried and cooked fruits and vegetables; jellies, jams, fruit sauces; eggs, milk and milk products; edible oils and fats.

Class 30. Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking-powder; salt, mustard; vinegar, sauces (condiments); spices; ice.

Class 31. Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals, malt.

Class 32. Beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.

Class 33. Alcoholic beverages (except beers).

Class 34. Tobacco; smokers' articles; matches.

Services

Class 35. Advertising; business management; business administration; office functions.

Class 36. Insurance, financial affairs; monetary affairs; real estate affairs.

Class 37. Building construction; repair; installation services.

Class 38. Telecommunications.

Class 39. Transport; packaging and storage of goods; travel arrangement.

Class 40. Treatment of materials.

Class 41. Education; providing of training; entertainment; sporting and cultural activities.

Class 42. Providing of food and drink; temporary accommodation; medical, hygienic and beauty care; veterinary and agricultural services; legal services; scientific and industrial research; computer programming; services that cannot be placed in other classes.