Trade marks – An overview Part 1

What is a trade mark?

In the UK a trade mark holder’s rights can be protected in one of two ways. Firstly as a registered trade mark which is protected by the law of registered trade marks. Secondly as an unregistered trade mark protected at common law via passing off. The focus of this article will be on registered trade marks.

Essentially a trade mark is defined as a sign which can be represented graphically and further is capable of distinguishing the goods/services of one business from those of another.  A trade mark can be a very powerful tool used to protect a company brand. Trade marks can be registered and doing so allows the owner to:

• Take legal action against anyone who uses the brand without permission (e.g.counterfeiters)
• Put     the ® symbol next to the company’s brand. This shows that the brand belongs to the company and also serves as a warning and deters others against using it.
• Sell and licence the brand.

Importantly the protection gained by registration of a trade mark is potentially unlimited and the scope of this protection is equivalent to an exclusive right to use the mark. This is defined in s.9(1) of the Trade Mark Act 1994

“The proprietor of a registered trade mark has exclusive rights in the trade mark which are infringed by use of the trade mark in the United Kingdom without his consent”

In order for a trade mark to be successfully registered it must be unique and so it follows that a commonly used combination of words is not capable of being registered as a trade mark.

Examples of marks that can prima-facie be registered as a trade mark include:

• Words (examples include Onesies, Kleenex, Post-its…)
• Slogans (e.g. “Because you’re worth it”- L’Oreal)
• Designs (e.g. the Coca-Cola bottle)
• Letters (e.g. HSBC in respect of banking services)
• Numerals (e.g. 911 Porsche)
• Internet Domain names (e.g. ebay.com)
• The shape goods and their packaging (e.g. Apple’s iPod)
• Smells (e.g. tennis balls with the smell of freshly mown grass)
• Sounds e.g., the 2oth Century Fox fanfare music)
• Colours (e.g. Christian Louboutin’s red sole)
• Gestures (e.g. Gareth Bale’s eleven of hearts goal celebration)
• Moving digital images (e.g. Intel’s “leap ahead” animated logo)

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