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Types Of Trade Mark Infringement

There are three primary types of trade mark infringement in the UK that are cited in 1994’s Trade Marks Act. Violation of any of these can result in a penalty for the unauthorised third party. Acts which are considered to be a violation include:

  • Fixing the sign onto packaging or goods
  • Supplying services or selling goods under the trademarked sign
  • Exporting or exporting goods under that sign
  • Using that sign on promotional materials 

The Use Of Identical Marks On Like-For-Like Services And Goods

Section 10 (1) of the Trade Marks Act cites that any unauthorised third party use of a mark which is identical to an already registered trademark on a like-for-like service or product is an infringement. In such cases, the mark has to have been reproduced without any modifications. Minor modifications that would be unnoticeable from the perspective of the average consumer are considered to be identical for trade mark violation purposes.

The Use Of Identical Marks On Similar Services And Goods

In Section 10 (2) (a) and (b) of the Trade Marks Act it is cited that the use of identical registered trade marks by an unauthorised third party on similar services or goods or, alternatively, the use of a trade mark which is very similar to a registered mark on similar or identical services and goods is considered to be an infringement when confusion is caused as to the services or goods’ origin.

The Use Of Similar Or Identical Trade Marks On Services Or Goods Which Aren’t Similar

Under Section 10 (3) of the Trade Marks Act, it is also considered to be an infringement if unauthorised third parties use a similar or identical trade mark on services or goods which aren’t similar and, thus, benefit from that registered trade mark’s pre-existing reputation to gain unfair advantage in the marketplace.

Using Signs In The “Course of Trade”

There is one further type of infringement when it comes to trade marks. If a trade mark already has an existing reputation but its trademarked sign is then used in relation to services or goods which are similar or identical to that trade mark in order to gain unfair advantages over competitors to the registered trade mark’s detriment this is known as being used in the “course of trade” and is also an infringement of the law.

Unregistered and registered design rights

What rights does your registered and unregistered designs have?

Good design lies at the heart of any good business. An excellent design transforms a product into a brand- think Coca-Cola’s distinctively curvaceous bottle or the iPhone’s iconic product design- so it’s important to protect the appearance of your product. The most common methods of protecting the design of your product here in the UK are through registered and unregistered design rights.

What is a design?

It’s not just fashion brands that need design protection. Your ‘design’ is anything related to the visual aspects of your product. It could be a distinctive logo, a pattern you decorate your goods with, symbols, product shape or packaging.

In simple words, a registered design is protection for the appearance of the whole or part of your product.To register your design, it needs to be original and unique. A similar design cannot already exist in the marketplace.

UK Unregistered Design Rights

Here in the UK, we have a two-fold system of protecting design rights; unregistered and registered design rights. Unregistered design rights are automatically given with no formal application. You acquire the rights by creating a product to the design, or producing a design document. If a third party copies your design, they will have infringed upon your design rights.

Unregistered design rights don’t last forever. They expire 15 years from the year the design was first recorded, whether in manufacture or a design document. However, if your product containing the design is made available for sale or hire anywhere in the world  within the first 5 years then the date shifts to 10 years from the first sale. This mean that for most commercially useful designs, the unregistered design rights last for 10 years from first marketing. In the last 5 years of protection, any party is entitled to obtain  a Licence to make or sell the design.

Unregistered design rights exist throughout the European Union as Community Unregistered Design Rights, giving roughly the same amount of protection but lasting for only 3 years.

UK Registered Design Rights

Registered design rights are received through a formal application to the UK Intellectual Property Office. In order to qualify for protection from UKIPO, the design has to be ‘new’ and show ‘individual character’. It can’t be a generic mark or a design that produces no overall different impression from other designs. Registered design rights grant you monopoly rights, that is, only the holder of the rights has the exclusive right to use all or part of the design.

A UK Registered design can last for 25 years of protection, but has to be renewed every 5 years.  Registered design rights exist throughout the European Union under the name of Registered Community Designs. Like UK Registered designs, the protection lasts for 25 years but must be renewed every 5 years.

So why register for Registered Design Rights when Unregistered Design Rights exist?

The difference between registered and unregistered design rights is all about the level of protection. Registered design rights have much better protection than unregistered designs.

Say, for example, you think another company is infringing on the design of your product. If the mark is unregistered, you have to prove that the third party has copied your design in order to win against them. You have to prove that they took the idea directly from you to make their product. If your product is a registered design, then you only have to prove that their product is too similar to yours- regardless of whether the alleged infringing design was created entirely independently or with knowledge of the design.

There are other reasons as to why registered design rights; registered designs last much longer than unregistered designs (25 years for the former or 3 to 10 years for the latter);  Unregistered design rights are limited, they do not give you monopoly over a design. On the other hand registered designs can provide extra protection on top of registered trade mark rights if your logo has graphic elements; and finally having a registered design helps your market competitiveness by adding business value. After all, shows your commitment to the product and is a registered design is an asset like any other- it can be sold, licensed out or transferred as the owner sees fit.

A comparison table of unregistered and registered design rights in the UK and EU

5 Useful Tips For Registering A Trade Mark In The UK – Part 1

Registering a trade mark in the UK

The process of registering a trade mark can be complicated, which is why we highly recommend that you use a trade mark attorney or a specialist solicitor to register your trade mark. Saying that, we also understand that some people are on a tight budget and therefore cannot afford the legal costs involved. So if you plan on registering a trade mark yourself, here are 5 steps which will help you register a trade mark.

1 – Signs which are not registrable

Firstly, it is important to know what a trade mark is. A trade mark is a sign that distinguishes the goods and services of one trader from another in the market place. Registering a trade mark gives you exclusive rights to use a mark in connection with specific goods or services. Due to this not every mark can be registered. The trade mark law has strict requirements over what signs can be registered.

When thinking of registering a trade mark, the first question you need to ask yourself is, “Will my sign (word, logo, slogan, etc…) be seen by the general public as a trade mark?”. This is the question the the UK IPO (Intellectual Property Office) will consider. There are a few signs which cannot be registered and we’ve listed them as follows:

  • a general description of your goods or services for example ‘warm thermos’;
  • a description of their goods or service’s characteristics, for example ‘light vacuum’;
  • lack of distinctiveness in a sign for example ‘band-aid’;
  • and/or are customary in the language of the trade for example ‘Panadol’;

All of the above will be the subject of an objection by the UK IPO.

By creating a very imaginative mark, you can reduce your chances of getting an objection from UK IPO. For a word mark, its best to invent a word. Alternatively, you can choose words that are not obviously associated with your good or services. For a logo mark, it is highly advisable to have a stylish design element, which is unique and distinguishable. The more unique and distinctive your mark, the better the chances of having your application being accepted.

If you are not sure if your sign is in compliance with trade mark law, you can use the UK IPO on-line RightStart application. This application process includes trade mark assistance for non-professionals. Through this procedure, you only pay half of the fees upfront as the examiner only examines your application to inform you if there will be any obstacles to registering your trade mark. If the examiner thinks that your mark is not in compliance with trade mark law or finds a confusingly similar trade mark, you are free to abandon the application at this point. You must note that the government fees will not be refunded.

2 – Prepare your list of goods and services

A trade mark registration does not give protection over your mark in general. It gives you protection over your mark in relation to certain goods and/or services. So before filing a trade mark application, you need to precisely determine the goods and/or services under which your trade mark will be used. Once identified, they will need to be classified under an international classification called “Nice Classification” and you will then have to mention them in your application.

The Nice classification divides goods and services into 45 different classes: Classes 1 to 34 are for goods and classes 35 to 45 are for services. Whilst it may seem easy to understand the concept of organising your goods and services into different classes, the reality is not as simple.  Each class contains thousands of terms and descriptions. When writing your classification, it is important to:

a. include all the terms applicable or that will be applicable in the near future to your business;
b. not be tempted to choose a wide range of goods and services. If you are too broad, your registration might be subject to cancellation for non-use in relation to those goods and services for not being in use 5 years after the date of registration;
c. and be precise, because if your terms are found to be too vague, it will cause delays in the process of your application;

In the second part, we’ll give you tips on searching existing trade marks, which might conflict with yours and how to file your application correctly.

 

Differences between an EU trade mark and a UK trade mark

Difference between an EU and UK trade mark in an infographic
From the 23rd of March, there have been changes to the EU trade mark registration process. This post has been updated to reflect those changes.

Trade mark registration is territorial in the sense that you must generally register your brand on a country-by-country basis. For example, a trade mark that is registered in the UK will only provide registered protection within the UK. A business or company which trades in different countries beyond the UK and which wants to secure trade mark registration will generally need to do so in each individual country in which it is actively trading. An important exception is the European Union Trade Mark (“EUTM”) which, with a single filing, provides registered protection across the whole EU territory without the need to apply to register your mark in each individual EU member state.

Deciding between an EUTM and a UK trade mark

If you are actively trading in several EU countries, you could secure registered trade mark protection for all of them in one go if you file an EUTM application. As a rule, the costs of EUTM registration are cheaper than separate national filings in more than two or three EU states. And, of course, upon registration, your mark will enjoy protection across all 28 EU states (or 27 after the departure of the UK from the EU).

If, however, you actively trade under your brand in the UK only then a national UK trade mark registration is probably the best way to go. Financially, it is far cheaper than filing an EUTM application.

The potential downside of EUTMs

Precisely because an EUTM registration protects your brand across the entire territory of the EU, it not possible to exclude one or more EU states from the EUTM application. A consequence of this is that a valid opposition or challenge to your EUTM from an earlier trade mark owner in just one EU state is enough to prevent completely the registration of the EUTM. So, for example, a successful opposition by the holder of a national trade mark registration in Malta (whose population is about 0.01% of the EU total) would prevent you from obtaining EUTM registration, although you could still seek protection at a national EU state level.

Please note also that if your UK or EUTM application should be refused, you will not be able to recover the filing fees which have been paid.

Difference between an EU and UK trade mark in an infographic

The Fees

EUTMs are levied by the EUIPO on a per-class scale. For a single-class application, the EUIPO official fees are eur850. A two-class application will incur official fees of eur900. There is a fee of eur150 for each additional class thereafter.

UK national trade mark fees are also levied on a per-class basis. The UKIPO official fees for a single-class application are £170 and the extra fee for each additional class is £50. Additional official fees may also be payable depending on the type of mark. For example, a series mark will incur an additional fee of £50 for each mark added to the series.

You can calculate the fees for your trade mark by using our trade mark calculator.

Deciding between filing your application in the UK or the EU requires consideration of several factors. It is highly advisable therefore to consult with a trade mark specialist in trade mark law who will be able to give you the best trade mark filing strategy adapted to your needs. Click here to complete our form and one of our trade mark lawyers will contact you to discuss your options.

The Trade Mark Registration Process In The UK – Infographic

A flow chart of the trade mark process in the UK

Trade marks registration can be a complicated process. This is why the entire process can take between 4 to 5 months. There is no guarantee that the trade mark will be registered, but if clear guide lines are followed and a trade mark attorney is involved, your trade mark has a good chance of being filed. A trade mark is in essence your brand. It has to be unique for it to be registered. A registered trade mark gives the owner legal rights to take action against others who use the brand name without permission. Trade mark protection is limited to the country where the trade mark has been registered.

If you trade in the UK only, then you should register a trade mark in the UK. The infographic below shows the trade mark registration process in the UK.

A flow chart of the trade mark process in the UK

The Patent Registration Process In The UK – Infographic

A flow chart of the patent registration process in the UK

A patent is used to protect an invention. It gives the owner complete ownership of an invention and the right to take legal action anyone who uses, sells or copies the inventions without permission. The ownership usually lasts for 20 years.

A patent application can take a long time (3 to 4 years) to get registered. There are also conditions which need to be met for a patent to get registered. These conditions are listed as follows:

– the invention should have some new characteristic, which should be verified by industry experts
– the invention should introduce an “inventive step” or a “non-obvious” function, which haven’t been introduced by industry experts before
– the invention must be capable of being used for an industrial or business purpose
– some things are not patentable in the UK for e.g. scientific theories, mathematical methods, discoveries of natural substances, computer programs etc.
– the invention should be described in a clear and complete manner in the application; another technical expert should be able to recreate it using the description

The infographic below shows the process of registering a patent in the UK.

A flow chart of the patent registration process in the UK