Font Size

Protect your company name by registering a trade mark

 By

Lawdit Solicitors - Expert Author

Legal Articles
Submit Articles   Back to Articles

11 March 2011

A trade mark is "...any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging."

The benefits in registering a your brand as a trade mark include the fact that the mark will be a deterrent to potential infringers (people/companies looking to copy and "ride on the coattails" of your goodwill which your company has built up and is building up. Registration is a deterrent because a registered trade mark is relatively easy to enforce as opposed to an unregistered right.

If you leave a brand unregistered and somebody copies the same, then a cause of action known as passing off may be available. Passing off actions are time consuming because a claimant must produce evidence to show that it has built up goodwill in that name there is no requirement to provide such evidence of goodwill in trade mark infringement proceedings.

When should I register my brand as a trade mark?

It is not necessary to wait to register a mark until you are actually trading with that name. However if the mark is not in use then you must have a bona fide intention to use that mark. It is advisable to register as soon as possible. Many of our existing clients will often provide us with a list of names which we can provide advice on and check against the register of trade marks to see whether there are any identical or similar marks already registered an therefore whether it is viable for the client to use that mark.

Will my proposed trade mark be capable of registration?

On submitting your proposed trade mark application the examiner will have to assess a number of grounds for refusal. If your proposed trade mark falls within an absolute ground then the examiner will not allow your proposed mark to progress further (subject to exceptions discussed below).

The following shall not be registered-

(a) signs which do not satisfy the requirements of section 1(1).

(b) trade marks which are devoid of any distinctive character.

(c) 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,

(d) 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

(b), (c) or (d) 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.

If you are looking to register a brand or a series of brands then call this office for further information and advice.

Paul is a trainee solicitor specialising in intellectual property law and can be contacted via paul.bicknell@lawdit.co.uk


About the Author

Lawdit Solicitors offer services and advice for litigation, commercial contracts, Intellectual Property and IT legal agreements. We are experts in commercial law with a heavy emphasis on Intellectual Property, Internet and e-commerce law. Lawdit is a member of the International Trademark Association, the Solicitors' Association of Higher Court Advocates and we are the appointed Solicitors to the largest webdesign association in the world, the United Kingdom Website Designers Association.



Follow us @Scopulus_News

Article Published/Sorted/Amended on Scopulus 2011-03-16 13:21:02 in Legal Articles

All Articles

Copyright © 2004-2019 Scopulus Limited. All rights reserved.