Tennant IP

Trade Marks

Definition of a trade mark

A trade mark may consist of a word, design, logo, letters, a combination of any of these or even a shape or sound. The mark must be capable of distinguishing the goods or services of one business from those of other businesses.

Use of a trade mark

A trade mark can be used in a registered or unregistered form, but it is commercially advisable to register a trade mark. Registration gives the proprietor the best protection and chance of legal redress against a third party using the same or similar mark.

Making the application

Before applying for registration and, starting to use a trade mark, it is advisable to carry out a search of the trade marks register, this would ensure that there are no identical or similar registered marks, pending applications in respect of the same or similar goods/services, or dissimilar goods in the case where the registered trade mark has a reputation in the United Kingdom.

In order to register a trade mark, an application must be made to the Trade Marks Registry. An application can be made in the name of an individual, a partnership or a corporate body. The application must specify the mark and the goods/services for which the mark is used or proposed to be used.

List of classes

The register is divided into 45 different classes under which goods/services are registered. If goods/services fall within more than one class of the register, a multi-class application can be submitted to extend coverage to a number of different classes of the register.

Registration

An application to register a trade mark can take between 6-12 months, provided no objections to it are raised during the examination / registration process.

Duration of registration

A registered trade mark lasts for an initial period of 10 years from the application date. The mark can then be renewed for a further period of 10 years in order to maintain its status as a registered mark.

Non-use

A registered mark is liable to revocation from the register if:

• it has not been put to genuine use in the UK by the proprietors or with their consent within a period of 5 years from its registration;
• if has been suspended for an uninterrupted period of 5 years and there are no proper reasons for non-use.

Infringement rights

A registered trade mark is infringed by the use of the same or similar mark, in respect of the same or similar goods for which the trade mark is registered. Infringement rights also extend to use of an identical or similar mark for dissimilar goods or services, where the registered trade mark has a reputation in the UK.

Remedies available for infringement

The main remedies are:

• an injunction to stop the infringement
• damages or an account of profit
• delivering up of infringing goods, materials or articles.

Assignments/Licensing

A registered trade mark can be assigned with the goodwill of the business or independently. An assignment/license may be limited to some but not all the goods or services for which the trade mark is registered and to a particular locality. An assignment/license is not effective unless it is in writing signed by or on behalf of the proprietor/grantor.

An application to register an assignment/licensee of a registered trade mark must be made within 6 months of the date of the transaction, otherwise the assignee/licensee will not be entitled to damages or an account of profits in respect of any infringement of the registered trade mark occurring after the date of the transaction and before the particulars of the transactions are registered.

Conclusion

We would emphasise the above notes are only intended to give you some idea of the most important matters relating to the protection of trade marks by the way of registration. We would be happy to give you further advice, relevant to your particular trade mark and circumstances, in order to help you decide whether to seek registered mark protection.

Cost for UK application / Registration

Application

One Class £399.75

Each additional class £125.00

Final fee inclusive of watching £129.25

These charges are inclusive of any Statutory Fees and Vat.

In some cases, objections to registration may be raised by the Registrar or third parties and further charges will arise in dealing with these.

Other SystemsThere are other systems for obtaining registration of a trade mark such as the European Community which gives protection throughout the 27 member countries or the Madrid Protocol System where participating countries can be designated. Information and cost on these systems will be provided on request.

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