What is a trade mark?
A trade mark is usually a word or logo or a
combination of both, used to distinguish the product
or service of a particular trader. Registering a trade
mark can be essential to protect existing goodwill and
reputation, or when creating a new image or a new product
or service.
The definition of a trade mark for the purposes of the Trade Marks Act 1994
is any mark which:
(a) can distinguish between the goods and services of
one trader from the goods or services of another, and
(b) can be represented graphically.
Which words cannot be used?
A trade mark must be distinctive. It must not
just be a description of the goods or services covered
by the application, nor must it be a word which another
trade may legitimately wish to use in connection with
their own goods or services, for example, one could
not register 'sharp' for knives.
Similarly a device or logo which happens to be common
to a particular trade would not be registered as a trade
mark . For example a barber's pole would not be registered
in connection with hairdressing services.
Also, it is not possible to register a mark which is
very similar to an existing mark, as this could lead
to confusion, or one which is deceptive or suggests
connection with the Royal family or uses the union jack
or other official flags or symbols.
Why carry out a trade mark search?
A trade mark search is carried out to discover
whether a proposed name or logo is already registered.
The registration of a trade mark means that the owner
has the right under the Trade Marks Act to enforce the
exclusive use of the mark in respect of the class of
goods or services in respect of which it is registered.
This entitles the owner to take action for infringement
against anybody who makes use of the same or a confusingly
similar mark for the same or similar products.
A trade mark search can be carried out even if there is no intention to register a trade mark and is often done when a new company is formed. When a limited company is formed a search is always carried out to check that the proposed name is not already registered with the Registrar of Companies. However, the proposed company name may be the same or very similar to a registered trade mark. A trade mark search gives a broader picture of words and logos already registered. This may prevent unintentional infringement of an existing mark and the possible consequences of being sued, or having to abandon a company, business, or brand name, with all the inconvenience and expense this might entail.
Why register a trade mark?
Subject to any earlier rights which may be
established, registration of a trade mark gives the
owner a right to exclusive use of the mark in respect
of the goods or services registered. The owner can sue
for infringement of his registration if someone else
uses the same or a similar mark on the same or similar
goods or services. Large sums of money may be spent
on designing and advertising a particular product and
mark. Unauthorised use of that mark may mean the rightful
owner losing business and goodwill.
If the trade mark is not registered then one may seek redress through the courts under common law in a "passing off" action. This is a much more complicated procedure. Firstly, the owner must establish that the mark is associated with his goods or services in the mind of the public. He must then persuade the court that the mark used by the other party is likely to cause the public to assume that the goods and services of the other party could be mistaken or associated with those of the owner, and that this will cause damage to his trade.
If, however, the mark is a registered trade mark it is a much simpler action.
To sue for infringement under the Trade Marks Act the
owner only has to show that someone else has used a
mark the same as or similar to that of the owner's in
connection with goods or services that are the same
or similar. If a successful action is brought, the owner
of the mark may be entitled to damages, an injunction
to stop the unauthorised use of the mark and the distribution
of goods which infringe the mark and/or a claim to the
profits made by its infringement.
In certain circumstances the deliberate use of a registered
trade mark on goods, by another person and without the
owner's knowledge, may be classed as counterfeiting.
This is a criminal offence.
The identity of a business and its brand name are important
assets. When a business is sold, the fact that its name,
and any brand names it uses, are registered as trade
marks, can be important to reassure the purchaser that
these important assets are protected. Indeed, a valuable
trade mark and the rights under it can, in some cases,
be sold as separate, identifiable assets.
Who may register a trade mark?
Any trade mark owner, whether a British subject
or not. The mark must be used or proposed to be used
in the United Kingdom.
Can a trade mark be registered in other countries?
Yes. A European Community trade mark can be
registered at the office for harmonisation of the Internal
Market in Alicante. This will provide protection in
all 17.50 countries of the European Union including the
UK. If trade mark protection is required in more than
half of the countries of the European Community, registration
of the Community Trade Mark may be the cheaper and most
effective option, giving protection throughout the EU.
The difficulty, however, is that if the mark is found
unacceptable in one EU country, then the application
will be refused completely.
A trade mark can also be registered in other countries both within and outside the European Union. In most countries the procedure and classification of goods and products are similar to those in the UK, though the registration procedures and costs vary from country to country.
How do I register a trade mark?
Obtaining full registration of a trade mark
takes several months even in the most straightforward
cases, though as soon as the application is made priority
will be preserved against any later applicants. An outline
of the procedure is a follows:
The first stage is usually to undertake a full search to assess the registrability of the proposed mark, especially if a logo is involved. This will look at any registered, lapsed and pending trade marks which are similar in any way. If there is some doubt as to the registrability of the trade mark advice can be sought from the Registrar. A full description of the goods and/or services will be required.
For the application itself, the information required will be the name and address of the proprietor of the trade mark, a full description of the goods or services and full details of the proposed mark, including camera-ready copy of the logo, if there is one.
An application to register a trade mark can take between 6 to 12 months to be completed by the Registry. If no objections are raised during examination, the application may proceed to publication in the "Trade Marks Journal" . A published application will remain open to opposition by third parties for a period of three months. If no objections are received during this period, the application will proceed to full registration and a certificate will be issued within about six weeks from the end of the publication date.
Opposition and conflict with other marks
The trade mark examiner may raise objections
to acceptance for registration of a mark, or third parties
may file objections once your mark has gone to publication
in the Trade Marks Journal. These objections may be
overcome by obtaining a letter of consent from the owners
of any conflicting marks, or by arranging for a hearing
before the Registrar. At this stage it may be necessary
to instruct a registered trade mark agent.
Classification of goods and services
Every application to register a trade mark
must specify the goods and/or services of the mark.
The list of the goods and services must be a clear and
complete description. The Registry uses The Nice Classification
System which divides goods and services into 45 classes
(see below). This is similar to classification systems
used in other countries.
How much will a trade mark application cost?
The costs involved are as follows:
A full search on name and logo and report on registration:
£100.00 plus £17.50 VAT
Trade mark application for one category:
£200 plus £35 VAT, plus £200 registration fee = £435
For each subsequent category thereafter:
£20.00 plus £3.50 VAT, plus £50.00 registration fee
Fees must be paid when application commences.
These are the standard costs involved for a trade mark application. They do not cover the costs of any objections raised. It is not possible to determine whether objections will be made against an application and the costs involved. However, if objections are made, the possible extra costs could be:
charges for letters of consent from any opposing parties who already have similar marks registered;
charges for arranging and attending a hearing with the Registrar both to your representative and the Registry;
further charges from ourselves if the application procedure becomes long and complicated.
The Nice Classification System of Classes of Goods and Services
Class 1
Chemicals used in industry, science and photography,
as well as in agriculture, horticulture and forestry;
unprocessed artificial resins, unprocessed plastics;
manures; fire extinguishing compositions; tempering
and soldering preparations; chemical substances for
preserving foodstuffs; tanning substances; adhesives
used in industry.
Includes chemicals for the making of products belonging
to other classes. Does not include fungicides, herbicides,
insecticides or preparations for destroying vermin,
which are in class 5.
Class 2
Paints, varnishes, lacquers; preservatives against rust
and against deterioration of wood; colorants; mordants;
raw natural resins; metals in foil and powder form for
painters, decorators, printers and artists.
Does not include paint boxes for children which are
in class 16, or insulating paints and varnishes, which
are in class 17.
Class 3
Bleaching preparations and other substances for laundry
use; cleaning, polishing, scouring and abrasive preparations;
soaps; perfumery, essential oils, cosmetics, hair lotions;
dentifrices.
Includes deodorants for personal use. Does not include
air deodorising preparations, which are in class 5 or
scented candles which are in class 4.
Class 4
Industrial oils and greases; lubricants; dust absorbing,
wetting and binding compositions; fuels (including motor
spirit) and illuminants; candles, wicks.
Includes combustible fuels and scented candles.
Does not include fuel for nuclear reactors or electricity,
which are both in class 1.
Class 5
Pharmaceutical and veterinary preparations; sanitary
preparations for medical purposes; dietetic substances
adapted for medical use, food for babies; plasters,
materials for dressings, material for stopping teeth,
dental wax; disinfectants; preparations for destroying
vermin; fungicides, herbicides.
Includes food and beverages which are adapted for medical
purposes. Does not include supportive bandages which
are in class 10.
Class 6
Common metals and their alloys; metal building materials;
transportable buildings of metal; materials of metal
for railway tracks; non-electric cables and wires of
common metal; ironmongery, small items of metal hardware;
pipes and tubes of metal; safes; goods of common metal
not included in other classes; ores.
Includes mainly unwrought and partly wrought common
metals as well as simple products made from them; metallic
windows and doors and metallic framed conservatories.
Class 7
Machines and machine tools; motors and engines (except
for land vehicles); machine coupling and transmission
components (except for land vehicles); agricultural
implements; incubators for eggs.
Explanatory Note: This class includes mainly machines,
machine tools, motors and engines. Includes parts of
engines and motors; some parts for vehicles (e.g. exhausts
for vehicles); vacuum cleaners. Does not include engines
and motors for land vehicles are in class 12 or specialist
machines (e.g. weighing machines are in class 9).
Class 8
Hand tools and implements (hand operated); cutlery;
side arms; razors.
Explanatory Note: This class includes mainly hand operated
implements used as tools in the respective professions.
Includes electric razors and hair cutters; cutlery made
of precious metal. Does not include surgical cutlery
which is in class 10 or hand held and electrically powered
tools (e.g. electric drills are in class 7).
Class 9
Scientific, nautical, surveying, electric, photographic,
cinematographic, optical, weighing, signalling, checking
(supervision), life-saving and teaching apparatus and
instruments; apparatus and instruments for conducting,
switching, transforming, accumulating, regulating or
controlling electricity;apparatus for recording, transmission
or reproduction of sound or images; magnetic data carriers,
recording discs; automatic vending machines and mechanisms
for coin operated apparatus; cash registers, calculating
machines, data processing equipment and computers; fire-extinguishing
apparatus.
Includes computer hardware and firmware; computer software
(including software downloadable from the internet);
compact discs; digital music (downloadable from the
internet); telecommunications apparatus; computer games
equipment adapted for use with TV receivers; mouse mats;
mobile phone accessories; contact lenses, spectacles
and sunglasses; clothing for protection against accident,
irradiation or fire.
Does not include printed computer manuals which are
in class 16, self-contained computer games equipment
which is in class 28, various electrical items (e.g.
electric screwdrivers are in class 7 and electric toothbrushes
are in class 21).
Class 10
Surgical, medical, dental and veterinary apparatus and
instruments, artificial limbs, eyes and teeth; orthopaedic
articles; suture materials.
Includes electro-medical or surgical apparatus; massage
apparatus. Does not include contact lenses, spectacles
or sunglasses which are in class 9 or wheelchairs which
are in class 12.
Class 11
Apparatus for lighting, heating, steam generating, cooking,
refrigerating, drying, ventilating, water supply and
sanitary purposes.
Includes air conditioning apparatus, electric kettles,
gas and electric cookers, vehicle lights.
Class 12
Vehicles; apparatus for locomotion by land, air or water.
Includes motors and engines for land vehicles and certain
other parts and fittings (e.g. vehicle body parts and
transmissions). Does not include certain parts or fittings
for vehicles (e.g. exhausts and starters are in class
7, lights and air conditioning units are in class 11)
or children's toy bicycles which are in class 28.
Class 13
Firearms; ammunition and projectiles; explosives; fireworks.
Does not include apparatus for use in playing paint
ball combat games, which are in class 28.
Class 14
Precious metals and their alloys and goods in precious
metals or coated therewith, not included in other classes;
jewellery; precious stones; horological and chronometric
instruments.
Includes clocks and watches, custom jewellery. Does
not include certain precious metal items (e.g. cutlery
is in class 8, pens are in class 16).
Class 17.50
Musical instruments.
Includes stands and cases adapted for musical instruments.
Class 16
Paper, cardboard and goods made from these materials
which are not included in other classes; printed matter;
bookbinding material; photographs; stationary; adhesives
for stationery or household purposes; artists' materials;
paint brushes; typewriters and office requisites (except
furniture); instructional and teaching material (except
apparatus); plastic materials for packaging (not included
in other classes); playing cards; printers' type; printing
blocks.
Includes disposable nappies of paper for babies; printed
publications.
Does not include adhesives for industrial purposes which
are in class 1; downloadable electronic publications
which are in class 9 or providing electronic publications
which are not downloadable, which are in class 41. Does
not include wallpaper which is in class 27.
Class 17
Rubber, gutta-percha, gum, asbestos, mica and goods
made from these materials and not included in other
classes; plastics in extruded form for use in manufacturing;
packing, stopping and insulating materials; flexible
pipes, not of metal.
Includes semi-finished plastics materials for use in
further manufacture. Does not include unprocessed plastics
in the form of liquids, chips, granules, etc., which
are in class 1.
Class 18
Leather and imitations of leather, and goods made from
these materials and not included in other classes; animal
skins, hides; trunks and travelling bags; umbrellas,
parasols and walking sticks; whips, harness and saddlery.
Includes handbags, rucksacks, purses, clothing for animals.
Does not include leather clothing which is in class
9 (for protection against injury) or in class 25 (ordinary
apparel), nor certain specialist leather articles (e.g.
cheque book covers are in class 16).
Class 19
Building materials (non-metallic); non-metallic rigid
papers for building; asphalt, pitch and bitumen; non-metallic
transportable buildings; monuments, not of metal.
Includes non-metallic framed conservatories, doors and
windows.
Class 20
Furniture, mirrors, picture frames; goods (not included
in other classes) of wood, cork, reed, cane, wicker,
horn, bone, ivory, whalebone, shell, amber, mother-of-pearl,
meerschaum and substitutes for all these materials or
of plastics.
Includes both metallic and non-metallic furniture including
garden furniture, pillows and cushions.
Does not include duvets or covers for pillows, cushions
or duvets which are in class 24, furniture adapted for
medical use, which is in class 10, or furniture adapted
for laboratory use, which is in class 9.
Class 21
Household or kitchen utensils and containers (not of
precious metal or coated therewith); combs and sponges;
brushes (except paint brushes); brush-making materials;
articles for cleaning purposes; steel wool; unworked
or semi-worked glass (except glass used in building);
glassware, porcelain and earthenware not included in
other classes.
Includes both electric and non-electric tooth brushes.
Does not include electric kitchen appliances (e.g. food
processors are in class 7 and electric kettles are in
class 11) or kitchen and table cutlery which is in class
8.
Class 22
Ropes, strings, nets, tents, awnings, tarpaulins, sails,
sacks and bags (not included in other classes; padding
and stuffing materials (except of rubber and plastics);
raw fibrous textile materials.
Includes bags and sacks for transporting bulk materials.
Class 23
Yarns and threads, for textile use
Class 24
Textile and textile goods, not included in other classes;
bed and table covers.
Includes textile piece goods, bed and table covers.
Does not include paper table linen (which is in class
16) or electric blankets (not for medical use) which
are in class 11.
Class 25
Clothing, footwear, headgear.
Does not include clothing for the prevention of accident
or injury which is class 9, surgeon's clothing which
is in class 10 or clothing for animals which is in class
18.
Class 26
Lace and embroidery, ribbons and braid; buttons, hooks
and eyes, pins and needles; artificial flowers.
Includes dressmakers' articles, badges for wear (other
than precious metal badges).
Class 27
Carpets, rugs, mats and matting, linoleum and other
materials for covering existing floors; wall hangings
(non-textile).
Includes wallpaper. Does not include mouse mats which
are in class 9, mats specifically shaped/adapted for
vehicles which are in class 12 or travellers' rugs which
are in class 24.
Class 28
Games and playthings; gymnastic and sporting articles
not included in other classes; decorations for Christmas
trees.
Includes hand-held computer games equipment which is
self-contained (not adapted for use with TV receivers).
Does not include computer games equipment adapted for
use with TV receivers or software for electronic games
which are in class 9.
Class 29
Meat, fish, poultry and game; meat extracts; preserved,
dried and cooked fruits and vegetables; jellies, jams,
fruit sauces; eggs, milk and milk products; edible oils
and fats.
Includes prepared meals and snacks whose main ingredients
are proper to this class (e.g. soups and potato crisps).
Does not include sandwiches which are in class 35 or
foodstuffs for animals which are in class 31.
Class 35
Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial
coffee; flour and preparations made from cereals, bread,
pastry and confectionery, ices; honey; yeast, baking-powder;
salt, mustard; vinegar, sauces (condiments); spices;
ice.
Includes prepared meals and snacks whose main ingredients
are proper to the class (e.g. pizzas, pies and pasta
dishes). Does not include foodstuffs for animals which
are in class 31.
Class 31
Agricultural, horticultural and forestry products and
grains not included in other classes; live animals;
fresh fruit and vegetables; seeds, natural plants and
flowers; foodstuffs for animals; malt.
Includes all food and beverages for animals.
Class 32
Beers; mineral and aerated waters and other non-alcoholic
drinks; fruit drinks and fruit juices; syrups and other
preparations for making beverages.
Includes shandy, de-alcoholised drinks, non-alcoholic
beers and wines. Does not include tea, coffee or chocolate-based
beverages, which are in class 35.
Class 33
Alcoholic Beverages (except beers).
Includes wines, spirits and liqueurs; alcopops.
Does not include beers, which are in class 32.
Class 34
Tobacco; smoker's articles; matches and lighters.
SERVICES
Class 35
Advertising; business management; business administration;
office functions.
Explanatory Note: This class includes mainly services
rendered by persons or organisations principally with
the object of:
(1) help in the working or management of a commercial
undertaking,
(2) help in the management of the business affairs or
commercial functions of an industrial or commercial
enterprise,
(3) services rendered by advertising establishments
primarily undertaking communications to the public,
declarations of announcements by all means of diffusion
and concerning all kinds of goods or services.
Includes the organisation, operation and supervision
of loyalty and incentive schemes; internet advertising
services, production of radio and television advertisements,
accountancy, auctioneering, trade fairs, opinion polling,
data processing, providing business information, certain
specific services provided by retailers.
Does not include computer programming, which is in class
42 or raising finance for business, which is in class
36.
Class 36
Insurance; financial affairs; monetary affairs; real
estate affairs.
Includes building society services, banking (including
home banking), stockbroking, financial services via
the internet, issuing tokens of value in relation to
bonus and loyalty schemes, provision of financial information.
Does not include accountancy, which is in class 35,
lottery services, which are in class 41 or surveying
and conveyancing services, which are in class 42.
Class 37
Building construction; repair; installation services.
Includes installation, maintenance and repair of computer
hardware; painting and decorating.
Does not include installation, maintenance and repair
of computer software, which is in class 42.
Class 38
Telecommunications.
Includes all telecommunication services, (e.g. e-mail
services and those provided for the internet); providing
user access to the internet (service providers); operating
search engines.
Does not include creating, maintaining or hosting web
sites, which are in class 42.
Explanatory Note: This class includes mainly services
allowing at least one person to communicate with another
by sensory means. Such services include those which:
(1) allow a person to talk to another,
(2) transmit messages from one person to another, and
(3) place a person in oral or visual communication with
another (radio and television).
Class 39
Transport; packaging and storage of goods; travel arrangement.
Includes distribution of electricity; travel information.
Does not include travel insurance which is in class
36, or booking holiday accommodation, which is in class
43.
Explanatory Note: This class includes mainly services
rendered in transporting people or goods from one place
to another (by rail, road, water, air or pipeline) and
services necessarily connected with such transport,
as well as services relating to the storing of goods
in a warehouse or other building for their preservation
or guarding.
Class 40
Treatment of materials.
Includes the development, duplicating and printing of
photographs; generation of electricity.
Explanatory Note: This class includes mainly services
not included in other classes, rendered by the mechanical
or chemical processing or transformation of objects
or inorganic or organic substances.
Class 41
Education; providing of training; entertainment; sporting
and cultural activities.
Includes electronic games services provided by the internet;
the provision of on-line electronic publications and
digital music (not downloadable) from the internet.
Does not include downloadable on-line electronic publications
or digital music which are in class 9 or educational
materials in printed form, which are in class 16.
Class 42
Scientific and technological services and research and
design relating thereto; industrial analysis and research
services; design and development of computer hardware
and software; legal services.
Includes installation, maintenance and repair of computer
software; computer consultancy services; the following
internet related services are also proper to this class:
design, drawing and commissioned writing for the compilation
of websites; creating, maintaining and hosting the web
sites of others; compilation, creation and maintenance
of a register of domain names; leasing of access time
to a computer database (on a dedicated line and not
via the internet - access by internet service providers
in general is in class 38).
Does not include providing access to the internet or
portal services, which are in class 38.
Class 43
Services for providing food and drink; temporary accommodation.
Includes restaurant, bar and catering services; provision
of holiday accommodation; booking and reservation services
for restaurants and holiday accommodation.
Does not include provision of permanent accommodation
which is in class 36 or arranging travel by tourist
agencies, which is in class 39.
Class 44
Medical services; veterinary services; hygienic and
beauty care for human beings or animals; agriculture,
horticulture and forestry services.
Includes dentistry services, medical analysis for the
diagnosis and treatment of persons (such as x-ray examinations
and taking blood samples), pharmacy advice, garden design
services.
Does not include scientific research for medical purposes
(such as research into cures for terminal diseases,
which is in class 42), ambulance transportation, which
is in class 39, health clubs for physical exercise,
which are in class 41, or retirement homes, which are
in class 43.
Class 45
Security services for the protection of property and
individuals; a limited range of personal services not
covered in other service classes, including dating services,
funeral services, undertaking services, fire-fighting
services, detective agency services.
Does not include beauty care services for human beings
or animals, which are in class 44, or educational services,
which are in class 41.