Protect your company name by registering a trade mark
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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
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
(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
Paul is a trainee solicitor specialising in
intellectual property law and can be contacted via
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.
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Article Published/Sorted/Amended on Scopulus 2011-03-16 13:21:02 in Legal Articles