A trade mark allows a company or business to protect a mark, which distinguishes its product or brand allowing it to be easily recognisable to its customers. Danielle Austin explains the key aspects of a trade mark.
What is a trade mark?
Under the Trade Marks Act 1994 a trade mark is any sign capable of being graphically represented and which is capable of distinguishing goods or services from one business to another. A mark does not necessarily need to be a word mark and can include logos, 3D shapes, sounds, colours, images and smells.
What can be registered as a trade mark?
Not all distinguishable marks can be protected. Nestlé in the case of Société des Produits Nestlé S.A v Cadbury UK Ltd lost its application to trade mark a KitKat as it was held by the Court of Appeal that the shape of the four fingered chocolate bar was not a distinguishable feature.
Very few colours are registered as trade marks. The turquoise colour used by Heinz on its baked beans tins was successfully granted registration. However, Cadbury recently lost its ten year battle to register a shade of purple as a trade mark which has featured on its chocolate bar wrappers for almost 100 years.
It is possible for slogans to be registered as a trade mark which have become an indicator of trade origin. Some famous slogans which have been capable of being registered as trade marks include Nike telling you to “Just do it” and Red Bull’s energy drink which “Gives you wings”. Carlsberg were also successful in registering the trade mark “Carlsberg – probably the best beer in the world”’ which some may argue is debateable.
However, in the case of Société des Produits Nestlé S.A v Mars UK Ltd the KitKat was foiled again and Nestlé were unable to register the slogan “Have a break” independently from the well-known slogan “Have a break…have a KitKat” as it was held to be a common phrase which could not be distinguishable.
It is also possible to register a name as a trade mark. Last year Victoria Beckham was successful in her application to register the names of her children as trade marks.
How do you apply to register a trade mark?
An application to obtain a UK trade mark application should be filed with the UK Intellectual Property Office or an application can be made for an EU trade mark with the European Intellectual Property Office which will also cover the UK. Registration of a trade mark is granted for ten years and can be renewed indefinitely to provide perpetual protection provided that the mark does not lose its ability to distinguish the particular goods or services in question and is kept in use. The Bass Brewery’s red triangle trade mark is Britain’s oldest trade mark having been registered for more than 140 years and still remains valid today.
How do you indicate that a trade mark has been registered?
Once a trade mark is registered the symbol ® may be used to indicate to the world that a trade mark has been registered and is protected by law.
However, the use of the symbol TM indicates that a trade mark is not registered but that the owner of the mark is claiming it as an unregistered trade mark although the mark is not guaranteed to be protected under trade mark law but may gain protection if it has been used for a number of years.
You may wish to consider protecting a mark used in your business if it is capable of being graphically represented and capable of distinguishing the goods or services provided by your business by applying to register it as a trade mark. This will grant you an exclusive right to use the mark and ensure that no one else is able use it without your consent.