Making your Mark

What is a trade mark?

A trademark is a sign that can distinguish your goods and services from those of other traders. This may include, words, logos or pictures in a number of combinations.

What are the benefits of registering a trade mark?

Your trade mark forms your branding and your branding sets you apart from the rest. Businesses invest time and money to get their branding just right. Embarking on a trade mark application is the first step to making sure you own your brand. This gives you the legal right to stop anyone else from using a mark that is confusingly similar to yours.  It also gives you the right to sell it, or licence it should you wish.

Your branding could be your biggest asset. Make sure you are the legal owner.

But I have the domain name and am registered at Companies House

This is a really good start, but it would not stop somebody else from registering your mark or a similar mark with the UK Intellectual Property Office. At which point you could find yourself in the unfortunate position of infringing a mark that you thought you owned. You would then need to undergo the expense of re-branding . You may face a claim for damages and for a proportion of any profits which you have made and which are attributable to the trade mark.)

Surely I have certain basic rights

That is certainly true. However, rights in trademarks are better acquired through registration at the UK Intellectual Property Office. It is cheaper and easier to enforce a registered trade mark than it is to sue for "passing off".

The benchmark of any trademark infringement case is the likelihood of confusion. That is, the alleged infringer will be prohibited from using a trademark on a competing product if it is likely to cause confusion to a customer or client. Courts have set out a number of factors for determining the likelihood of confusion, such as the closeness of the appearance, sound (if relevant) and meaning of the conflicting marks; the relatedness of the goods on which the marks are used; the channels of commerce in which the marks are sold; and the sophistication of the relevant purchasers of the goods. Thus, in analysing any trademark infringement situation, all of these factors amongst others, will be considered.

We had the idea first, doesn't that give us the right to use the mark?

It is not as simple as this, as Target, America's fourth largest retailer found out last year.  Target has a distinctive red and white bulls-eye as its logo. It has used this widely on all branding throughout the US since 1968. When planning an international expansion, they faced an immediate challenge in the UK from Music Choice, a British digital music provider. Music Choice also has a target symbol as its logo and had the sense to register it in 2001. Despite being one of the largest retailers in the US, with a budget to match, the UK regulator ruled that Music Choice was the legal owner of the logo and had exclusive rights to it as they had registered the mark.

If you have any questions regarding your trade mark please feel free to call our dedicated advisor, Sam Hopkins on 08458 678978 or email  her on: sam.hopkins@acumenbusinesslaw.co.uk