The common law on passing-off and the statutory regime under the Trade Marks Act 1994 together have the effect of turning a sign or mark into a form of property. The 1994 Act gave effect to Directive 89/104/EEC on the approximation of laws relating to trade marks.1
In the sixteenth century the common law evolved to protect marks. A trader’s mark was, at this time, an indication of the source of a product. If another trader used the same mark it would, so the reasoning went, allow the commission of a fraud on the public and the trader could bring an action for deceit to remedy the situation. This was later replaced by an action for ‘passing-off’ to protect a trader who had acquired a good reputation which was associated with the use of a particular sign or mark. An action for passing-off may still be brought today. It requires a trader to establish that a misrepresentation has been made which deceived customers as to the source of a product. While passing-off, as a common law remedy, requires no proactive action on the part of a producer of goods, it can be a complex and costly legal action to bring.
In the late nineteenth century the Trade Marks Act 1875 created the Trade Marks Registry which was empowered to grant proprietary rights in a trade mark. A trade mark had to be distinctive and more than simply an indicator of origin. The fact of registration was sufficient to give protection without having to establish misrepresentation and deceit, and it offered the opportunity to secure protection of a mark or sign prior to first use. The Trade Marks Act 1994 provides greater protection covering the use of a mark on a dissimilar product, the recognition of a mark as an asset and extended infringement provisions. On the downside, the process of registration is time consuming and can, but not always, also be costly.
This document provides an overview of the arrangements for registration of a trade mark under domestic UK law on application to the Trade Mark Registry administered by the Intellectual Property Office based in Newport, South Wales. There are two other forms of registration: under Regulation (EC) 207/2009 on the Community-wide trade mark following an application to the Office for Harmonization in the Internal Market which is based in Alicante in Spain and, at the international level, under the Madrid Agreement,2 the UK is a party to the Protocol3 but not the main agreement. International applications are made to the International Bureau of the WIPO based in Geneva, Switzerland.
Registering the name of your business as a company and securing appropriate internet domain names do not protect that name from being used by others. Registering the name as a trade mark along with any logo provides this protection.
While it is common for trade mark attorneys to deal with trade mark applications to the IPO it is a relatively straightforward process to make an application in person.
2 What is a Trade Mark?
A trade mark is any sign capable of being represented graphically and capable of distinguishing goods or services of one undertaking from those of another. A trade mark may consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.4 The three requirements are:
Capable of graphic representation.
Distinctive of one undertaking as against others.
2.1 A Sign
A sign is widely defined and means anything which can convey information.5 Abstract concepts, however, are not signs which must possess a specific format. A transparent collection bin on a vacuum cleaner was a concept or idea in which transparency was simply a property of a product.6
In short, a trade mark can consist of almost anything. The statutory list is no more than a few examples illustrating the possibilities.
2.2 Capable of Graphic Representation
The applicant for a trade mark is required to provide an adequate representation of the trade mark. In order to be registered as a trade mark, a sign must:
… be represented graphically, particularly by means of images, lines or characters, and that the representation is clear, precise, self-contained, easily accessible, intelligible, durable and objective.7
In the majority of cases where a mark is represented by lines, drawings, words and images little difficulty arises. Where complications do arise they tend to involve marks involving sounds, shapes, colours, tastes, smells and gestures, for example, where graphic representation raises difficulties.
2.3 Distinctive of an Undertaking
A mark must be capable of distinguishing the goods and services of one trader from another. What this means in practice is covered in the application of the absolute grounds for refusal of registration.8
3 Grounds for Refusal to Register
3.1 Absolute Grounds for Refusal
The 1994 Act sets out a number of grounds on which there exists absolute grounds for refusal of registration.9 These grounds may be grouped into three categories.
The following cannot be registered:
a) Signs which do not satisfy the requirements of the 1994 Act,10 namely that the sign is capable of being represented graphically and capable of distinguishing goods or services of one undertaking from those of another.
b) Signs which consists exclusively of:
- The shape which results from the nature of the goods themselves.
- The shape of goods which is necessary to obtain a technical result.
- The shape which gives substantial value to the goods.
Non-distinctive trade marks
The following cannot be registered:
a) Trade marks which are devoid of any distinctive character.
b) Trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services.
c) Trade marks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.
Provided that, a trade mark shall not be refused registration by virtue of paragraph (a) to (c) above if, before the date of application for registration, it has in fact acquired a distinctive character as a result of the use made of it.
A mark that possesses distinctive character is “capable of identifying the product as originating from a particular undertaking, and thus distinguishing it from other undertakings.”11 This assessment is made on the basis of how the trade mark would be perceived by the average consumer of the goods and services in question. The average consumer is taken to be “reasonably well-informed and reasonably observant and circumspect”.12 The test is satisfied by a minimal degree of distinctive character.
Trade marks which are simply descriptive are excluded from registration, since descriptions provide no indication of origin.
3. Other grounds for refusal
A trade mark cannot be registered:
a) If it is contrary to public policy or to accepted principles of morality.
b) If it is of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).
c) If or to the extent that its use is prohibited by law.
d) If it is a specially protected emblem (see below).
e) If or to the extent that the application is made in bad faith.
3.2 Relative Grounds for Refusal
Relative grounds for refusal provide the basis on which an application can be opposed and, if successful, refused. In addition, relative grounds may form the basis on which an application may be made to have a registered mark declared invalid. These grounds comprise two categories.
1. Earlier trade mark rights
A trade mark cannot be registered:
a) If the trade mark and the goods and services with which it is associated are identical to both an earlier trade mark and the goods or services associated with the earlier mark.13
b) If the trade mark is identical with an earlier trade mark and is to be registered for goods or services similar to those for which the earlier trade mark is protected and there is a likelihood of confusion on the part of the public.14
c) If the trade mark is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected and there is a likelihood of confusion on the part of the public.15
d) If a trade mark is identical or similar, the goods and services are not similar but the earlier mark has a reputation which the later mark would take unfair advantage or cause detriment to that reputation.16
Amongst other things, these provisions raise the question of what is the meaning of ‘identical’. This is to be given a strict interpretation and the two marks should be the same in all respects.17 The test, however, is to be applied from the standpoint of the average consumer and the overall impression created, insignificant differences may go unnoticed. Ultimately, it is a question of fact to be determined in all the circumstances of a particular case.
In the case of goods and services, they are identical if they are within the same or a broader category of goods and services associated with the earlier mark.18 Similarly, overlapping categories of goods and services are treated as identical.19
The similarity of marks has given rise to a fertile body of case law which is beyond the scope of this document to provide a full account. One leading case established the ‘global appreciation’ approach in which the trade marks as a whole are compared as they would be seen by the average consumer. The dominant and distinctive components of the marks are the focus of attention and the degree of aural, visual or conceptual similarity they share.20
We are then left with what is meant by the likelihood of confusion. This is judged from the viewpoint of the average consumer of the type of goods and services in issue who is reasonably well-informed, observant and circumspect.21 The confusion which exists must be in regard to the source or origin of the goods and services, which includes creating the belief that a business is authorised or licensed by the trade mark owner.
The final ground raises additional questions of reputation, unfair advantage and detriment.
… in order to enjoy protection extending to non-similar products or services, a registered trade mark must be known by a significant part of the public concerned by the products or services which it covers.22
While unfair advantage covers one business effectively getting a free ride on the reputation of another23 and detriment means detrimental to the distinctive character of the earlier trade mark, also known as dilution or blurring.24 The last hurdle to overcome falls to the applicant to show due cause in the use of the later trade mark. This means more than simply acting in good faith and the circumstances in which it may be justified are few.
2. Earlier rights
A trade mark cannot be registered if, or to the extent that, its use in the UK is liable to be prevented by virtue of:
a) Any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade.
b) An earlier right, in particular by virtue of the law of copyright, design right or registered designs.
Invented words and short phrases do not ordinarily receive the protection of copyright. There is nothing to prevent another from using these words as a trade mark and registering it as a trade mark, although a trade mark cannot be registered if or to the extent that the application is made in bad faith.25
Nothing in the above provisions prevents the registration of a trade mark where the proprietor of the earlier trade mark or other earlier right consents to the registration.26
3.3 Specially Protected Emblems
Trade marks which consist of or contain the following may not, without the consent of Her Majesty, be registered:27
a) The Royal arms, or any of the principal armorial bearings of the Royal arms, or any insignia or device resembling the Royal arms or any armorial bearing likely to be mistaken for the same.
b) A representation of the Royal crown or any of the Royal flags.
c) A representation of Her Majesty or any member of the Royal family, or any colourable imitation.
d) Words, letters or devices likely to lead persons to think that the applicant either has or recently has had Royal patronage or authorisation.
In addition a trade mark may not be registered where it consists of or contains a representation of:
a) The national flag of the UK (commonly known as the Union Jack).
b) The flag of England, Wales, Scotland, Northern Ireland or the Isle of Man.
Where it appears to the Registrar that the use of the trade mark would be misleading or grossly offensive.
Similar restrictions exist for a trade mark containing national emblems, etc. of Convention countries or emblems, etc. of certain international organisations28 and arms possessed under a grant of arms by the Crown or insignia resembling the same without consent.29
Finally, a trade mark which consists of or contains a controlled representation of the Olympic Symbol cannot be registered unless made by or with the consent of the authorised person appointed for this purpose.30
4 Revocation of Registration
The registration of a trade mark may be revoked on any of the following grounds:
a) The trade mark has not been used within five years of registration in relation to goods or services for which it is registered and there is no good reason for non-use.
b) The use has been suspended for an uninterrupted period of five years and there is no good reason for non-use.
c) The mark has become generic or the common name in the trade for a product or service for which it is registered.
d) The mark has been used in such a way that it is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services.
The registration of a trade mark may be declared invalid on the ground that the trade mark was registered in breach of any of the absolute grounds for refusal of registration (see paragraph 3.1 above). This is subject to the proviso where a trade mark was registered in breach of the non-distinctive trade mark provisions, it shall not be declared invalid if, in consequence of the use which has been made of it, it has after registration acquired a distinctive character in relation to the goods or services for which it is registered.
The registration may also be declared invalid on the ground that there is an earlier trade mark in relation to which the conditions of earlier trade mark rights (see paragraph 3.2 above) apply or there is an earlier right in relation to which the conditions of earlier rights apply, unless the proprietor of that earlier trade mark or other earlier right has consented to the registration.
5 Infringement of a Trade Mark
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 UK without his or her consent.33
Infringement proceedings are normally brought by the owner of the trade mark and the rights of the owner are generally enforceable against others for acts done after the date of registration. The acts which amount to infringement34 are:
a) Using in the course of trade a sign which is identical to the trade mark for goods and services which are also identical to those for which the mark is registered.
b) Using a sign identical to the trade mark in relation to goods or services similar to those for which the mark is registered and there exists a likelihood of confusion, which includes the likelihood of association with the trade mark.
c) Using a sign similar to the trade mark in relation to goods or services identical or similar to those for which the mark is registered and there exists a likelihood of confusion, which includes the likelihood of association with the trade mark.
d) Using a sign which is identical with or similar to the trade mark in relation to goods or services which are not similar to those for which the trade mark is registered, where the trade mark has a reputation in the UK and the use of the sign, without due cause, takes unfair advantage of, or is detrimental to, the distinctive character or the reputation of the trade mark.
These grounds are expressed in similar terms to those for relative grounds for refusal35 with the result that similar considerations apply in their application. The only additional requirements in infringement proceedings are the need to establish what amounts to the defendant’s sign and the need to demonstrate that it was used in the course of trade. In this context a person uses a sign if, in particular, he or she:
Affixes it to goods or packaging.
Offers or exposes goods for sale, puts them on the market or stocks them for these purposes under the sign, or offers or supplies services under the sign.
Imports or exports goods under the sign.
Uses the sign on business papers or in advertising.
This list is not exhaustive, but illustrative of what amounts to a use.
A person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, shall be treated as a party to any use of the material which infringes the registered trade mark if when he applied the mark he knew or had reason to believe that the application of the mark was not duly authorised by the proprietor or a licensee.
Finally, there is a form of secondary infringement, in that a person who applies a registered trade mark to material intended to be used for labelling or packaging goods, as a business paper, or for advertising goods or services, is treated as a party to any use of the material which infringes a registered trade mark if, when the mark was applied, he or she knew or had reason to believe that application of the mark was not authorised. The key point to highlight here is the need to prove that a defendant had knowledge at the time the mark was applied that their act was not authorised.
There are a range of defences to infringement proceedings which are not covered here since this is a topic in its own right.
6 Application Process
6.1 UK Trade Mark Registry
The arrangements for registering a trade mark are administered by the Trade Mark Registry at the Intellectual Property Office. The Register of Trade Marks is open to inspection by interested persons. Any natural or legal person may apply to register a trade mark. The application must be in respect to particular goods or services and must contain:
A request for registration of a trade mark.
The name and address of the applicant.
A statement of the goods or services in relation to which the trade mark is sought.
A representation of the trade mark.
The application must confirm that the trade mark is being used, either by the applicant or with his or her consent, in relation to the particular goods or services, or that the applicant has a bona fide intention that it should be so used. The application is also subject to the payment of an application fee and such class fees as may be appropriate.36
The statement of the goods or services is important because it is this, not the classification (see below) which defines the scope of protection. This does not mean that submitting broad statements about the goods and services is a good idea, this may simply complicate and lengthen the process. It will increase the likelihood of objections being raised and may result in the applicant having to confine the goods and services to those where actual use can be demonstrated.
The date of filing of an application for registration of a trade mark is the date on which documents containing the required information in paragraphs a) to d) above are provided and, if provided on different days, the last of those days. The date of application for registration is the date of filing.37
The Registrar, on accepting an application, arranges for it to be published38 in the Trade Mark Journal which is published every Friday. Care should be taken to register all appropriate internet domain names prior to publication for otherwise these are, from this point on, vulnerable to cyber squatters.
Following publication other parties may then, within three months of the date of publication,39 comment on or oppose the registration on the basis of earlier proprietary rights possessed in relation to registered or unregistered trade marks.
The Registrar deals with any submissions made and, if it appears to him or her that the requirements for registration are met, the application must be accepted.
If it appears to the Registrar that the requirements for registration are not met, the applicant is given the opportunity, within such period as may be specified, to make representations or to amend the application. If the Registrar remains not satisfied or the applicant fails to respond before the end of the specified period, the application must be refused.40
Registration of a trade mark is not for all purposes, only the class or classes of goods and services for which the application was made. The classification is based on the Nice Classification which divides goods into 34 classes and services into 11 classes.41 Classification is a mainly administrative process to assist in searching earlier trade marks. The classification does not generally impact on the scope of protection afforded by registration unless, for example, the statement of the goods or services in relation to which the trade mark is sought refers to particular classes.
Registration of a trade mark is granted for 10 years, but may indefinitely be renewed.42
The IPO offers an online service for registering a trade mark which, it is claimed, takes 10 to 15 minutes to complete but this excludes the careful preparation needed beforehand. It represents the most cost effective way in straightforward cases. The cost starts at £170 for a single class and takes about three months where no objections are raised. A simple checklist of the steps involved is contained in REGISTER A TRADE MARK.
6.2 European Trade Mark Registry
An application for a Community-wide trade mark follows a similar process and may be made either directly to the Office for Harmonization in the Internal Market (OHIM) or through the IPO.
2 Madrid Agreement Concerning the International Registration of Marks, 14 April 1891, as amended
3 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks, 27 June 1989, as amended
5 Philips Electronics BV v Remington Consumer Products  RPC 283
12 Ibid., para 41
18 Discovery Communications v Discovery  ETMR 516
19 Galileo Trade Mark  RPC (22) 569
21 Lloyd Schuhfabrik Meyer & Co. GmbH v Klijsen Handel BV (Case C-342/97), para 26
23 Adidas-Salomon AG and Adidas Benelux BV v Fitnessworld Trading Ltd (Case C-408/01)
24 Premier Brands UK v Typhoon Europe  FSR 767
41 Ibid., s34 and the International Classification of Goods and Services for the Purposes of the Registration of Marks, 10th edition, 1 January 2013