The Limits of Trademark Law

A trademark is a sign that identifies you as the owner of your goods or services and are registered to protect your brand. They act as a vital mechanism to distinguish your business from competitors. Your trading reputation will be attached to your business because of a trademark, making it an invaluable resource, symbolic of trust.

Why are trademarks important?

Functioning as a core business asset, trademarks serve several critical purposes:

• They ensure customers know exactly who made the product they are buying, because companies cannot use similar names, which may become confusing.
• They encourage businesses to maintain consistent quality by tying the brand’s name to its products.
• They provide legal protection, because registered trademarks give you the exclusive right to use the mark and legal action is much easier to take.
• They can also create revenue through licensing agreements and franchising.

Should there be cause for concern?

Concern may be fostered for those who are not familiar with trademarks, relating to the potential for endless trademarking of ideas, which would lead to a minefield of liability and trademark infringements (where a name, logo, or slogan is used that is identical or confusingly similar to a legally registered trademark, which could deceive consumers) for prospective entrepreneurs.

What can be trademarked?

Logos, numbers, words, letters, abbreviations, packaging designs, smells, symbols, colours and sounds can all be trademarked, granted they meet the criteria for eligibility.

The mark should be original and distinctive, and it is preferable that it would suggest what the product is without explicitly defining it, for example ‘Jaguar’ automobiles – indicating speed and power – or be completely unrelated to the product, for example a ‘Mars’ chocolate bar – a planet is of no relation to food. The mark must also apply to one or more products or services specifically, which will align with the trademark application you submit.

What cannot be trademarked?

There are online Government databases which list all the existing trademarks and users can broadly search by keyword, phrase or image, which allows people to easily discover whether their brand or idea already exists. The Intellectual Property Office’s online trademarks journal also allows people to object to or challenge trademark applications upon publication and this may be because the trademark is descriptive, generic or non-distinctive and would therefore restrict others in that line of trade. The published trademark may also conflict with an existing trademark or right and this reflects the narrowing breadth for inventions or ideas.

The following core categories also cannot be trademarked:

• Generic terms which use the common name for a product or service, such as ‘water’ and ‘car’
• Words that merely describe the ingredients, quality, purpose, or characteristics of a product, including ‘premium’ and ‘quick’
• Offensive or immoral content, such as insignia and obscenity
• Misleading marks which would deceive the consumer about the nature, origin, or quality of a good, for example labelling a product ‘Swiss Chocolate’ when it does not come from this region
• Official emblems, including the NHS Logo and The Royal Coat of Arms of the United Kingdom
• Functional shapes, such as a square box, and:
• Common surnames and geographical locations, including ‘Smith’ and ‘Scotland’

These restrictions effectively limit what can be trademarked, to prevent unreasonable impositions and branding monopoly.

Trademarks will also only exist indefinitely if they are maintained through the decennial renewal fees. This means that if a registered mark goes unused for several years, competitors may be able to cancel and use the branding themselves. This prevents marks becoming dormant or disused, whilst remaining unavailable to competitors.

Conclusion

These safeguards are vital in managing and overseeing trademarks and clearly specify where liability is and how businesses and individuals alike can avoid infringements. If you are interested in trademarking and protecting your product or idea, it is recommended to seek legal advice and support.

by Amelia Taunton a student at Barton Peveril College