UK and European Trade Mark Protection and the Law

The fundamental purpose and function of trade marks is to provide consumers with the means to demarcate the goods and services of one trader from another. It allows consumers to recognise your products or services as yours alone and thus avoid confusing it with the products or services of a competitor. Trade marks provide an exclusive way in which your goods or services can be identified as originating from you.
Furthermore, trade marks reflect certain attributes and qualities which consumers can identify with certain products and services and so be given a sense of assurance that their requirements of quality and taste will be met.
Independent of the above, shall we say, traditional functions and purposes of trade marks - given that businesses have invested enormous resources to develop and market not only their goods and services but also the brands which are associated with them – they also fulfil an ‘advertising function’. It is a function that needs to be protected in same way as the function of identifying where the goods or services originate (i.e. one trader as opposed to another) and the function of assuring quality and taste.
Registered Trade Marks
When a trade mark is registered under the Trade Marks Act 1994 (‘TMA’) it distinguishes your goods or services from your rivals and thereby obviates confusion with other products or services. In other words, it protects against deceptiveness as to origin. It does not matter whether a trade mark is represented as a logo, brand, signature, name, picture, shape, slogan, jingle, colour, word, marquee or otherwise, it performs the same functions.
Section 1(1) of the TMA defines a trade mark as:
‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings’.
In order to avail oneself of the protection granted to trade marks under the TMA, it is necessary first of all to make sure that the trade mark is properly registered. This may be to state the obvious but there is often confusion with other intellectual property rights like passing off, copyright, confidential information and design rights which do not require registration. Such registration grants the registered proprietor the ‘exclusive rights in the trade mark which are infringed by the use of the trade mark in the [UK] without his consent’ [section 9(1)].
Registration grants a statutory monopoly to use of the mark. This means that the registered proprietor can use the registration to prevent others from using the same or similar mark on the same or similar goods or services.
Infringement
Secondly, the defendant’s use of the trade mark must fall within the definition of infringement as outlined under section 10 of the TMA. A defendant can be said to have infringed a trade mark in the following circumstances:
¨ If he uses in the course of trade a sign which is identical with the trade mark in relation to goods or services which are identical with those for which it is registered
¨ If he uses in the course of trade a sign where because it is identical with or similar to the trade mark and is used in relation to goods or services similar to or identical with those for which the trade mark is registered, ‘there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the trade mark.’
¨ If he uses in the course of trade a sign which is identical with or similar to the trade mark, and is used in relation to goods or services which are not similar ‘where the trade mark has a reputation in the [UK] and the use of the sign without due cause, takes unfair advantage of, or is detrimental to, the distinctive character of the repute of the trade mark.’
Duration
The life of a registered trade mark is ten (10) years from the date of registration, unless it is renewed. If properly managed and administered the duration of a registered trade mark may be “forever”. However, if a trade mark owner fails to renew a trade mark on time, it may be removed from the Register. Accordingly, it would be prudent to engage a reputable trade mark attorney to ensure that your trade mark is carefully monitored and regularly and properly renewed.
The Register
The Register of Trade Marks of available for inspection at www.ipo.gov.uk. The Register displays current information and the status of all registered trade marks in the UK and those registered with the European trade marks office, known as OHIM.
Defences
There are a number defences available to competitors to lawfully use the registered trade marks of rivals in certain circumstances. The most significant one is the allowance given to fair use. Under section 10(6) it is lawful for a competitor to use the trade mark of a registered proprietor ‘for the purpose of identifying goods or services as those of the proprietor’ or his licensee, provided it is ‘in accordance with honest practices in industrial and commercial matters’. This provision is designed to allow competitors to use the trade mark of another for the purposes of comparative advertisement. However, the use of such trade marks must be fair. The question of when a use of another’s trade mark is fair has been visited by the courts a number of times since the passing of the TMA in 1994. An important case in this context is Barclays Bank v RBS Advanta [1996] RPC 307 where Laddie J concluded that a plaintiff could not succeed simply by showing that the defendant was taking ‘unfair advantage’ of the trade mark. He needed to show that there was ‘material dishonesty’ before he could succeed in establishing that there had been ‘unfair’ use. Subsequent cases have given rise to the objective standard of the “reasonable reader” to ascertain whether a use is ‘material dishonesty’ and therefore unfair.
Europe Wide Registration
Traditionally, one of the problems with the trade marks registration system is that it is territorial. This means that if you register in the UK, protection is only afforded in the UK and nowhere else. If you wish to get protection in France as well, for example, you must also register the trade mark in France. However, it is now possible to register a trade mark on a Europe wide basis by just making one registration which will grant protection in any one of the fifteen member states. This known as the Community Trade Mark. A Community Trade Mark provides protection by means of a single registration covering the whole of the European Union. Registration of a Community trade mark is granted by the Office for the Harmonisation of the Internal Market (Trade Marks and Designs) which is located in Alicante, Spain.
This Europe wide registration is not really a unified registration system but an application deposited to seek protection in a number of nominated separate territories. It avoids the preparation and filing of separate applications in each country for which protection is required. The trade marks laws which apply to each such countries would be different
Trade Mark Licensing
Under section 28 of the TMA it is possible to license to use a registered trade mark on a general or limited basis or on an exclusive or non-exclusive basis. So, trade mark owners are able to authorise others to use their trade marks any practically any terms that they see fit. Trade mark licences should be in writing, and exclusive licences must be in writing.
Trade Mark Infringement
When a business uses a trade mark without the permission of the proprietor of the trade mark, continued use of the trade mark may be prevented by the grant of an injunction, and losses suffered by the trade mark owner occasioned as a result of the infringement may be remedied by an award of damages.
Conclusions
Trade Marks play a fundamental role in protecting business names, product names and the names attributed to services by business. In the event that another business copies a trading name, the original business is left only with rights granted by the law of passing off, which generally requires substantial evidence of trading activity and extensive marketing, in order to overcome the threshold requirements for goodwill and reputation, which in essence is what the tort of passing off protects.
As trade marks represent the unique identity of a business, product or service, trade marks should form a central part to preserving brand identity of capital investment in promoting the business. Supposing two identical businesses that have been trading successfully for a number of years, and one has a registered trade mark and the other does not. If each of these businesses is the victim of another business copying their trading name, the business with a trade mark will almost invariably be in a superior position to protect the exclusivity of its trading presence. In effect, it may be the difference between not being in a position to protect their brand presence due to the more onerous evidential requirements required by making out a case for passing off.