The law that governs trademarks is under the Trade Mark Act 1994 (TMA 1994). A trade mark is defined as a badge of origin or source. Under the TMA 1994 it is defined as
‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings’.
For a trade mark to be registered it must be distinctive so that the customer can determine where the goods originated from. A trade mark can consist of words, designs, letters, smells, colours and many other aspects so long as they can distinguish one business from another.
When a trade mark is registered, there are 42 different classes that it can be registered within. This is split into 34 classes for trade marks and 8 classes for service marks. Most businesses will have to register across different classes to cover themselves.
A registered trade mark must be renewed every 10 years in order to remain on the register.
Although some marks may pass the test to be registered as a trade mark, there are certain marks that are expressly made unregistrable;
1. Devoid of any distinctive character
2. Solely descriptive works
3. Contrary to policy or law
4. Functional shape
5. Similar to national emblems
6. Similar to earlier registered marks.
To apply to register a trade mark, the application should be sent to the Trade Marks Registry which is a division of the Intellectual Property Office. The application is sent on form TM3.
The class in which the mark should be registered should be specified within the application. The first class attracts a fee of £200.00 and then £50.00 for each additional class.
Once the application is received, it is inspected to see whether it satisfies the requirements for registration. If the trade mark is accepted, it must be published in the Trade Mark Journal and then if an individual wishes to oppose the mark, they can do so within 2 months of the publication.
If the application is successful, then the trade mark is registered for an initial period of 10 years. Once this time period lapses, the trade mark can be renewed for a fee. There is no limit on the number of times the trade mark can be renewed.
An individual infringes a trade mark should they use an identical trade mark for identical goods, causes confusion by using a similar mark or uses the mark to give an unfair disadvantage to the owner of the trade mark.
Injunction and damages can be awarded. The owner will usually obtain an injunction to prevent the other party from continuing to use the trade mark. The owner can then attempt to recover any loss in the form of damages, which he has suffered due to the infringement.
If an individual is accused of infringing a trade mark, there are a number of defences available. This includes factors such as the individual acting in accordance with the honest practices in industrial or commercial matters or uses the mark to indicate the intended purpose of goods.