Registering one’s trade marks delivers significant business benefits for brand owners. A registration provides a “monopoly” for your particular mark in respect of the goods and services for which it is registered.
As explained below, without a registration a mark owner faces a tougher route to enforcing their rights.
All business owners will, at some stage, need to consider how they can best protect their cherished marks (normally words and logos) against competitors and other parties using similar marks and sowing confusion in the marketplace.
Whilst some intellectual property rights in the UK automatically come into existence upon creation and do not have a system of registration, copyright being the most obvious one, there exists a well-established system of registering trade marks at the United Kingdom Intellectual Property Office (“UKIPO”).
Representative, and UKIPO official fees, are modest and a mark can be registered in as little as a few months from the date of filing (assuming no objections by an examiner or a third party).
Thought should be given to the types of goods and services for which the mark is used/will be used so that the correct classes for registration can be chosen and the “specifications” can be best drafted to protect the relevant goodwill attaching to the mark. Consideration should also be given to other territories outside of the UK where the mark is being/will be used.
1. A searchable register
The UKIPO register of trade marks is a public document and has a search functionality. Third parties considering using a particular mark can search the register and find your mark. This could help avoid disputes later.
2. Fixing a priority date
Your registered trade mark will give you priority rights from the date of filing; meaning others must recognise and respect those rights as existing from that date (unless they can prove that they have “prior rights” which pre-dating your filing). In short, it gives one a presumption of being “first in line” from that filing date onwards.
3. Objecting to third party applications
One may find that third parties make applications to register marks identical or confusingly similar to your registration. In such cases, having a registered trade mark with an earlier priority date gives one a solid ground to object to the registration of the potential competitor’s mark.
4. Enforcement
Unlike with “passing off” (discussed in more detail below), one does not need to prove that the mark has established a certain level of goodwill. A relatively new registration can often be enforced against third parties in the same way as a long-established mark. This differs significantly from unregistered rights.
5. A legal asset
A registered trade mark is a business asset and can be bought and sold like other assets. It can also be licensed; to allow others to use it (often in return for a royalty payment). If and when one comes to sell a business, part of the due diligence performed on the “target” entity will include a report on what intellectual property assets are held; and the trade marks which have been registered are likely to be an important part of this review. Indeed, a business with registered trade marks might command a higher price than one without.
6. Enforce against counterfeit/copycat goods
It is not uncommon for others to attempt to sell counterfeit and/or similar copycat goods as a result of a brand’s strong reputation and goodwill. By registering a trade mark, one can enforce against these and solidify your brand.
7. Save money
As mentioned, registering a trade mark is relatively cheap. It will also save money down the line in the case of conflict (as one does not need to go to the expense of proving protectable goodwill).
Clearly then there is a very strong case in favour of registering a trade mark.
However, it is not uncommon for a business to find that a third party is using an identical or similar mark to one which, for whatever reason, the business did not register. In such cases, all is not lost and the law of “passing off” fills what would otherwise be a gap in protection.
For a claim in passing off to be successful, one must establish a “trinity” of facts, namely:
It will immediately be noted that with a registered trade mark there is no similar obligation to establish ownership of sufficient goodwill/a reputation. Proving such matters is not always straightforward and gives one’s opponent an additional ground upon which to defend a claim. Moreover, the cost of gathering the necessary evidence and presenting it to the Court could be substantial.
Registered trade marks are a significant asset for all businesses with a valuable brand. They tell one’s clients and customers that they can be confident that you are the source of the goods and/or services which they are buying. Very few well known marks will be unregistered; as the owners all know how important it is to be able to claim a monopoly for that mark and to be able to more easily enforce it against any infringers.
The low cost, and the speed with which a registration can be achieved, should encourage all businesses to review their current portfolio of marks and to fill any gaps in their protection with an application to the UKIPO (and with the registries of other territories as necessary).
We specialise in Intellectual Property law. If you would like an informal discussion as to how we might help protect your brand, please contact Wing Ming Choi at wingming.choi@ilaw.co.uk or call +44 (0)203 987 0222.
