Did you know that Olympic champion and all-round legend Mo Farah’s ‘Mobot’ symbol is trade marked, as is Usain Bolt’s signature lightning bolt pose?
It may surprise you that these are not simply famous concepts – each has also been recognised as commercially valuable, and thereby worth protecting under intellectual property law. Similarly, prolific author Edgar Rice Burroughs, who created Tarzan, trade marked the character’s famous yell, and professor Stephen Hawking, along with J.K Rowling and David Beckham, applied to trade mark their names to prevent others using them to promote their products.
If you have spent years creating a recognised brand through blood, sweat and tears, you owe it to yourself and your business to trade mark your efforts. Registering a trade mark may give your customers confidence that they are purchasing a genuine product and/or service from a reputable source – your company. It also gives you the potential for a right of redress against a person or entity which tries to use your mark without gaining express permission to do so.
When registering your trade mark, there are three things you may wish to carefully consider:
- The difference between a compound and composite trade mark.
- What makes a trade mark distinctive?
- Common reasons for trade mark disputes and how to avoid them.
Tip 1 – Know the difference between compound and composite trademarks
There are typically two types of trade marks you might wish to consider for your business – compound and composite. A compound trade mark is a phrase or saying which includes generally used words such as ‘great’ and ‘again’. These words on their own cannot be trade marked, but put them together with ‘make’ and ‘America’ and you have a phrase that can be legally protected (for example, the “Make America great again” slogan used throughout Donald Trump’s presidential campaign).
A composite trade mark consists of a word or words combined with a design, such as the Starbucks mermaid-and-text logo or Nike ‘Just Do It’ used in conjunction with the company’s distinctive ‘Swoosh’ symbol…
One of the strengths of a composite trade mark lies in its distinctiveness. If you simply create a common word and combine it with a shape or colour, you will have a hard time convincing the Intellectual Property Office (IPO) that it is genuinely distinctive.
Tip 2 – Understand what makes a trade mark distinctive
Unless you are highly creative with a gift for words and design (it’s worth noting that the two do not necessarily go together), when it comes to creating a unique trade mark, engaging a design/marketing professional may save you time and money. This is because if a trade mark is not distinctive, it is unlikely to perform its intended function, which is ensuring that consumers can distinguish your goods and/or services from those of another company.
The existing legislation provides little guidance as to what makes a trade mark distinctive. The Trade Marks Act 1994 simply states that a given item being void of any distinctive character is justifiable grounds for a refusal of registration (section 3 (1)(b)). However, a combination of UK and European case law have shed light on when a trade mark might be constituted as distinctive. For example, factors such as your company’s market share and the length of time the proposed mark has been associated with your particular business may result in acquired distinctiveness. Alternatively, distinctiveness may sometimes occur naturally because the word or design is totally unique, for example, Swatch’s distinctive company name or the unique geometric design found in the intertwining Cs in Chanel’s company logo.
A word or logo that is purely descriptive of the business’ goods / services cannot be registered as a trade mark. Furthermore, if the characteristics or the trade mark are intrinsic to the product or the consumer’s choice of product, then the IPO may be more likely to refuse a given registration because of the lack of distinctiveness in the descriptive element of the trade mark.
The more unusual and striking a mark is, the greater its chances are of being successfully registered.
Tip 3 – Bear in mind common reasons for trade mark disputes
Trade mark disputes have increased over the past few years and one of the main reasons is that the internet has granted us an unprecedented level of visibility over businesses around the world – which in turn makes it much easier to spot a potential trade mark infringement.
A trade mark dispute can develop if a company launches a new brand which incorporates an established brand name together with another word which may already be registered as a trade mark by a third party. Sam Buck Lundberg, a coffee shop owner in Oregon discovered this when she named her café Sambucks – a name with similarities to the global ‘Starbucks’ coffee chain. Upon discovering Ms Lundberg’s coffee shop, and its curious name, Starbucks issued a cease and desist letter faster than a jittery office worker might say “skinny latte” and took Ms Lundberg to court and won when she failed to comply .
Many disputes involve trade mark violation. A person may run the risk of infringing a trade mark when they use a mark which:
- is identical to a registered trade mark in relation to goods and services which are the same as those for which the mark relates to;
- is similar to a registered trade mark in relation to goods and services which are the same as those for which the mark relates to and this could cause confusion for a consumer as to which company the goods and services are from; and
- is identical or similar to a registered trade mark which has a reputation in the UK, and the use of the sign takes unfair advantage of, or is detrimental to, the distinctive character or repute of the registered mark.
Trade mark or ‘passing off’ disputes are notoriously expensive, and litigation might cause delays in product launches. In worst case scenarios, this may even result in expensive product recalls. Therefore, not only is it economically prudent to formally register a trade mark, but if an infringement does occur, it could be worth exhausting all avenues of alternative dispute resolution, such as mediation and negotiation, prior to marching up the (very expensive) courthouse steps.
Following these three tips can help make the registration of your trade mark run smoothly and prevent possible disputes. For more information, please contact our office on 020 3588 3500.
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