What is a trade mark?
A trade mark is a sign used to distinguish the goods or services of one trader from those of a competitor, i.e. it indicates the source of the goods or services.
A sign can include any one of or a combination of: a letter, a word, a name, a signature, a number, a device or logo, or an aspect of packaging, shape, colour, sound or scent.
Although it is not compulsory to register a trade mark, doing so has many benefits.
Registered trade marks are published and easily searchable in the online database of the trade marks office. Any subsequent clearance searches conducted by third parties will locate the registration and thus most infringement is avoided even before a conflict arises.
The registration also provides a more cost effective way to enforce the trade mark as it avoids the need to rely on a 'passing off', which often requires market research to prove a reputation in the trade mark.
The sign selected must be capable of distinguishing the goods or services, i.e. it must be distinctive.
To be considered distinctive, the sign must not be deceptively similar to another trade mark. It is thus advisable to conduct a clearance search to identify any relevant third party trade marks before adopting use of a trade mark or filing a trade mark application.
The trade mark must not be descriptive of the goods or services as third parties are entitled to use any descriptive terms to describe their goods and service being offered.
Note, there is no novelty requirement for a trade mark and thus a valid application can be filed even if the sign has been previously used. Indeed, in some cases earlier use is required in order to substantiate the distinctiveness of the sign.
Duration of protection
A trade mark initially last for a period of 10 years from the filing date of the trade mark application. However, the trade mark can be repeatedly renewed at 10 year intervals in perpetuity. Thus the trade mark can be kept in force indefinitely.
Use it or lose it - you must actively use your trade mark in the course of trade. Any trade mark that is not used for a continuous period (normally 5 years) can be removed on the grounds of non-use. This is to discourage trade mark owners from unfairly registering many trade marks simply to stop other traders from using them.
It is advisable to start with a trade mark clearance search to establish the availability of the selected trade mark before using trade mark or filing the trade mark application. This search is optional, but it can save unnecessary costs being incurred in filing an application that will likely be rejected - more importantly it will highlight potential problems with the trade mark and will avoid the need to reprint advertising material and branded stationery.
The trade mark application needs to specify the classes in which it must be registered as well as providing a list of the relevant goods and services in each class for which you intend using the mark.
After filing, the trade mark application will be examined by the trade marks office and they will issue a report containing any objections that will lead to the application being refused. If the examination is successful, the application will be published to provide third parties an opportunity to oppose the grant of the patent - this will typically only be done if a third party has non-registered common law rights that may not have been considered by the examiner.
The trade mark will be registered is no opposition is filed or if the opposition fails.