The Basics: TRADE MARKS
- Nikkie Kitching
- Apr 23, 2019
- 5 min read
Welcome to the first ever blog of The Switch! In this blog we will be focusing on the basics of trade marks. Figured this would be helpful for students, working professionals or anybody looking to recap or build on their knowledge of trade marks.
Let's break it down...
So what exactly is a trade mark? According to the UK Trade Marks 1994, "a trade mark is a sign which is capable of being represented...and distinguishes goods or services of one undertaking from those of other undertakings." They can consist of words, designs, letters, numerals, colours, sounds or the shape of goods or their packaging.
Trade marks: The good, the bad and the...unregisterable?
No matter where you are, if you take a close look around you're likely to come across a trade mark. McDonald's golden twin arches. The three stripes of your Adidas trainers. The Apple logo on the Mac you're reading this article from. But how do we differentiate between a good trade mark and a bad one?
When it comes to creating trade marks, most people have the tendency to think of marks that are descriptive. As a general rule, it is best to stay away from these types of marks as they can come across as generic and will most likely not be registered. For example, if you were selling a line of alcoholic beers your trade mark could not be called "CHILLED BEER" as this is purely descriptive. Using marks like this prevents other companies or sellers to use the words "chilled" or "beer" to describe their own line of alcoholic beverages.
Some people might create a brand or product and would like to add a personal touch to it. For instance, calling the product by their last name or initials. Whilst this is better than descriptive and generic marks, these types of marks can be quite difficult to register as lots of surnames are common. Of course, it isn’t impossible as we are all familiar with brands like Johnsons and Disney. In successful surname trade mark cases, the owners are usually able to show other factors to back up their registration; for example:
The surname is rare and it's unlikely that it has been trade marked before
The surname can have other meanings
There are a combination of surnames i.e. Jones & Smith
However, the best kind of marks are known to be arbitrary or coined. These are usually words that don’t exist or that aren’t usually associated with their product. Let's take Nike, Apple and Coca Cola as some examples. Three of the biggest brands in the world that follow this rule.
As you can see from the pictures, their respective trade marks are striking and memorable. You will also notice that the word is either made up or has nothing to do with the product that they are selling. 'Nike' is a made up name but everyone will associate the word with reputable sportswear. 'Apple', in the context of IP, has nothing to do with fruit but rather technology and software. If you were to type in the word 'apple' into Google 90%
of your results would show the company/
product rather than the fruit. And Coca Cola of course refers to the drink.
Another good example is that of Kleenex. In the US, if someone were to get sick and need a tissue, they would usually ask for a 'Kleenex'. But Kleenex is actually the brand name for tissues rather than the actual name for a tissue. Because it is used worldwide, people often refer to the brand name rather than the name of the product itself.
Moreover, to make your mark even stronger, you can create a logo to go with the mark. With the right marketing and reputation, your company's logo will be able to be recognised without the use of words i.e. if a person sees a 'swoosh' tick without any words, they will know this is associated with Nike.
At the end of the day you want your trade mark to be unique and distinctive. The more people associate brand names to certain products, the better the trade mark stand outs.
I have an idea for a trade mark. How do I file one?
Prior searches
So you've now got a great idea for a trade mark and would like to register it. Before this can be done, it is imperative to do a search to ensure that there are no similar marks to yours. To do this in the UK, you can go to https://www.gov.uk/search-for-trademark and search either by a) trade mark number b) owner or c) a keyword, phrase or image. Furthermore, you can also check the IPO's online journal so that you are up to date with any trade mark applications which were accepted in the previous week.
How do I register my trade mark?
Provided that searches have been carried out and there are no conflicting marks, the next step will be registering the trade mark. This can either be done online or via post. When registering, you would need to input as much information as you have on the mark, including details of registered owners and the classes that your goods fall under. Different classes refer to different goods and can be found here i.e Class 25 refers 'clothing'. Fees will of course differ depending on number of classes. Most people would opt for the online choice as this method is cheaper and quicker.
What happens after registering?
Within 5-15 days of registering, you should receive an examination report. If the examiner accepts the application, your trade mark will be published in the UK Trade Marks Journal for 2 months (can also be extended to 3 months). It should be noted that if your trade mark is accepted, it does not mean that it has been registered. During this 2-3 month time frame, anyone can make either a third party observation or an opposition.
The less formal option, a third party observation, is where anyone can tell the UK IPO that they accepted the application in error. Alternatively, the more legal procedure of opposition is where you oppose the mark on the grounds that you want to prevent the mark from becoming registered. You will have 2 months to resolve this issue.
Once registration is complete and your trade mark is registered, a registration certificate will be issued to you. Your trade mark will then last for 10 years. After this date, renewal fees will apply every 10 years.
Overall, the registration process can take roughly up to 4 months.
Final thoughts
Hopefully this article has helped you when it comes to learning the basics of trade marks.
Whilst it is not compulsory to register your trade mark, it is highly recommended to go through the registration process so that your trade mark is protected. Once registered, you will have the freedom to use, sell and license your mark should you need to in the future. What's more, it allows you extra benefits including obtaining registration in other countries and prevents foreign import of goods.
Though it may seem daunting when it comes to filing new UK trade marks, the UKIPO website is fairly user-friendly and can help the process by breaking it down step by step.
Of course, as with anything that you are new to, it is wise to speak to a professional before proceeding with any type of application your business or company requires. In this scenario, speaking to a trade mark attorney or an IP solicitor would be your two best options.
For more information on trade marks, check out the following links below:
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