IP for Startups and other Small Businesses - Trade Marks

IP for Startups and other Small Businesses - Trade Marks

• 1.
  Trade Marks Jane Lambert1 A​trade mark ​is defined as “any sign which is capable- (a) of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and (b) of distinguishing goods or services of one undertaking from those of other undertakings.”2 Examples include words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging. EU and National Trade Marks Trade marks are granted by national, supranational or territorial intellectual property offices. In member states of the EU (including, for the time being, the UK) trade marks may be granted for the member state alone by that state’s national intellectual property office or for the whole of the EU (including the UK) by the EU Intellectual Property Office (“EUIPO”) in Alicante. Trade marks granted by the EUIPO are known as “EU trade marks” and those granted by national intellectual property offices as “national marks”. The Intellectual Property Office (“IPO”) in Newport registers trade marks for the UK. It is also possible to apply to several intellectual property offices with a single application under the Madrid Protocol. Applying for a Trade Mark Applicants for a UK trade mark must consist of (a) a request for registration of a trade mark, (b) the name and address of the applicant, (c) a statement of the goods or services in relation to which it is sought to register the trade mark, and (d) a representation of the trade mark. The requirements are very much the same elsewhere. 1 Barrister, 4-5 Gray’s Inn Square, London, WC1R 5AH, Tel 020 7404 5252, [email protected] 2 S.1 (1) Trade Marks Act 1994 1
• 2.
  Grounds of Refusal Applicationsmay be refused for two reasons: ● Absolute Grounds of Refusal: ​The mark is incapable of distinguishing the applicant’s goods or services or its registration would otherwise be contrary to the public interest; and ● Relative Grounds of Refusal: ​It is too similar to an existing trade mark for the same or similar goods or services or some some other intellectual property right would prevent registration. Examination Officials known as ​examiners ​examine the application to see whether it is eligible for registration, If they think it is they will advertise the application. If not, they may refuse the application. Applicants may appeal their decisions in to a tribunal known as a hearing officer in proceedings known as “ex parte applications”. Opposition Anyone objecting to an application may oppose it in ​opposition proceedings​. Unless they are resolved through negotiation, the proceedings come on for hearing before a hearing officer who determines the issue. Registration If there is no opposition or the applicant prevails, the application proceeds to grant. The applicant receives a certificate of grant and particulars of the grant are registered. Relevant Registration Trade Marks Act 1994 assets.publishing.service.gov.uk/government/uploads /system/uploads/attachment_data/file/742949/Trade- Mark-Act-1994.pdf ​Trade Mark Rules 2008 assets.publishing.service.gov.uk/government/uploads /system/uploads/attachment_data/file/770469/Legisla tion-Consolidated-Trade-Mark-Rules-SI_28.06.2018. pdf Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark eur-lex.europa.eu/legal-content/EN/TXT/?qid=150641 7891296&uri=CELEX:32017R1001 2
• 3.
  Term Trade marks maybe registered for periods of 10 years which can be renewed indefinitely. Costs Costs vary greatly from country to country, the complexity of the application and the professional services required but in most countries there are the intellectual property office’s fees for examining the application; and professional fees. An application for a UK trade mark is likely to be about £500 unless there are ex parte or opposition proceedings in which case the cost will be much more. Infringement Trade marks are infringed by using a sign that is: ● identical to the registered mark in respect of goods or services that are identical to those for which the mark is registered; or ● identical or similar to the registered mark in respect of goods or services that are identical or similar to those for which the mark is registered where, because of such similarity, there exists a likelihood of confusion on the part of the public, including a likelihood of association with the registered trade mark; or ● Identical or similar to the registered mark, where the registered 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 repute of the registered mark. Enforcement Actions to prevent or restrain Infringement or to recover damages for infringement proceedings are brought in the civil courts. If the claim is for less than £500,000 and can be tried in 2 days or less the action may be brought before the Intellectual Property Enterprise Court (“IPEC”), All other proceedings are brought in the Intellectual Property list of the Chancery Division of the High Court. Criminal Offences Certain trade mark infringements are offences in the UK. Revocation Registrations may be revoked on any of the following grounds: 3
• 4.
  (a) the markhas not been put to genuine use in the UK in relation to the goods or services for which it is registered within 5 years of the completion of the registration procedure and there are no proper reasons for non-use; (b) such use has been suspended for an uninterrupted period of five years, and there are no proper reasons for such non-use; (c) the mark has become the common name in the trade for a product or service for which it is registered that, in consequence of acts or inactivity of the proprietor; (d) the mark is liable to mislead the public, particularly as to the nature, quality or geographical origin of the goods or services or which it is registered, in consequence of the use made of it by the proprietor n relation to the goods or services. Invalidation A registration may be challenged on the ground that the mark should never have been registered. Cancellation Proceedings Applications for the revocation or invalidation of a trade mark may be raised by way of a counterclaim in infringement proceedings or in revocation or invalidity proceedings in the IPO. Threats Trade mark owners should be careful when communicating with suspected infringers because ​ ​they can be sued for threatening infringement proceedings unless the threat is justified.3 3 S.21A (1) Trade Marks Act 1994 4