Section 1 TMA 1994
Your trade mark must be capable of graphic representation. In practical terms, if your mark satisfies the relevant requirements, your mark will initially need to be produced in a 8cm by 8cm square in order for it to be publicised in the official Trade Marks Journal for opposition purposes, then later upon successful registration, in the Trade Marks Register.
If your mark is a word only, image or combination of both, this should not be problematic.
Your mark must also be capable of distinguishing your goods/services from those of other traders, section 3 of the TMA 1994 provides more detail on what is meant by this.
Section 3 TMA 1994
Two of the main reasons your mark will not be capable of being registered if it is considered that it lacks distinctive character, or is descriptive in relation to the goods or services you propose to use it on, for example ‘chunky chips’ for frozen chips, ‘shiny cars’ for car showrooms or ‘six pack’ for a pack of six cakes. It’s not difficult to think of the distinctive trade marks used on the every goods that surround our daily lives.
Section 5 TMA 1994
In the simplest of terms, section 5 does not allow a registration of a mark if it conflicts with an earlier registered mark, i.e. it is identical or similar to an earlier registered mark. The best way to avoid your mark falling foul of section 5 is to have an official trade mark search. A trade mark search identifies whether there are any existing registered marks, that are registered in relation to the goods or services you propose to use your mark.
As well as the above, you must also be aware that many businesses may have common law rights in relation to a mark they have used on their goods or services for a number of years. Therefore it is crucially important that you investigate whether there is an unregistered mark on the market that is identical or similar to your proposed mark to avoid an action for passing off. So, for example, you intend to start using a certain mark in relation to cosmetics, it is essential you carry out a simple Google search, look at beauty magazines and visit shopping centres/make up retailers to ensure you have covered your back.
Trade mark legislation can be complex and confusing, Lawdit are specialists in trade mark law, have a query? Contact us.
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