A trade mark is a word, phrase, symbol, and/or any combination of these that uniquely identifies a firm and/or its goods or services. A trade mark guarantees the item’s quality and gives its owner the legal rights to prevent the trade mark’s unauthorised use. It must be distinctive and not descriptive. A trade mark should be registered with an appropriate authority or otherwise it will not be able to obtain legal ownership and protection rights. Trade mark rights are usually granted for 10 years and, unlike other intellectual property rights such as patents, they can be renewed every 10 years for an indefinite period of time.
Marks that cannot be trademarked:
- Marks that are descriptive (e.g. super, best, cheap, one dozen);
- Marks that are identical or similar to well-known marks.
- Marks that are common to your trade (those that have become well accepted in relation to your trade and do not distinguish the goods or service you are offering);
- Marks that could offend or promote immoral behaviour;
- Deceptive marks (those that could misrepresent the nature, quality or geographical origin of the goods or services);
- Marks that are identical to earlier marks;
- Marks that could cause confusion (similar or identical to an earlier mark and in relation to similar or identical goods or services provided by the owners of the earlier mark);
There are many benefits of having a trade mark but it is not compulsory, meaning a company can function without one (although this is not recommended). If a company has not registered its brand as a trade mark, the company may be able to protect their mark against imitation or infringement by relying on ‘passing off’- this is a common law right. The main disadvantage of bringing an action for passing off is that it can be far more costly than a simple trade mark registration. Another benefit of registering a trade mark is that a trade mark can add value to your business as it can be used to protect your market share. You can licence it to third parties such as franchises, or you can sell it outright for a specified value. You can also use a trade mark to help you raise equity for the development of your business; this was famously done by Ford Motor Company.
There has been a recent trade mark infringement case which involved McDonalds and a European coffee company- ‘MacCoffee’ that tried to register the name “MACCOFFEE” as a trade mark. McDonalds alleged that MacCoffee unfairly benefited from the trade mark. The court agreed with McDonald’s and ruled that MacCoffee would be wrongly linked with that of the US burger giant. The MacCoffee trademark was registered in 2010 by the European Union Intellectual Property Office, but McDonald’s applied to have the trademark declared invalid on the basis of the similarity to its main EU trademark and 12 other trademarks that McDonald’s uses in the jurisdiction. Future Enterprises- the company that own MacCoffee have stated that they are “disappointed” with the latest decision and they plan to appeal.