A trade mark is a valuable asset vital to attracting investment and creating opportunities such as licensing. A trade mark is also a significant deterrent to other traders adopting similar business names and provides concrete proof of your claim to legal rights. If you are licensing a mark that belongs to others, it is important to consider the licensing or purchase opportunities available to you in order to avoid a dispute or litigation.

So, what is a trade mark?

A trade mark is a sign used by a business to distinguish their goods or services from those of their competitors.

Typically, a trade mark may consist of a word or device (often described as a logo) although more unusual signs such as sounds or smells can also function as trade marks.

The registration of a trade mark gives its owner the exclusive right to use the mark for the goods or services for which it has been registered in that country. In addition to protecting your trade mark in the UK a firm can trade mark in other countries as it is possible to protect your trade mark by way of registration in other nations in the world.

Choosing a trade mark

It is important, when starting a new business, building your brand and choosing a trade mark to ensure that this will not conflict with trade marks already used or registered by others.

It is possible to check for earlier registrations by conducting searches of the lists of registered and pending trade marks which are available for public inspection in most countries. Conducting an official trade mark search is a skilled business and it is always advisable to seek professional help. Failure to check that a proposed mark is properly available may lead to threats of legal proceedings from owners of conflicting earlier marks.

Trade mark searching is one of the more important steps to take when setting up a new business. It is equally advisable to take steps to register the trade mark once it has been chosen.

When to use ™ and when to use ®

The letters ™ indicate that a name (whether word or logo or a combination of both) is being used to identify a product or service which, through use, may have acquired common law rights. They can be used whether or not the mark is actually registered.

The symbol ® can only be used by the proprietor of a registered trade mark. It is illegal to use this symbol if the mark is not registered. The ® indicates that the owner of the trade mark has statutory rights in the mark by which he can sue users of an identical or similar mark on the same or similar goods or services for infringement of his rights. The ® does not mean that the registered proprietor does not also have common law rights which may have been acquired through use and which are additional to the statutory rights conveyed by the registration.

Trade mark watching services

Once your trade mark has been chosen it is prudent to set up a watch service in your country/countries of interest, to ensure that a competitor does not seek to register a mark which is identical or similar to yours.

Don’t forget domain names

Domain names are an important consideration and integral part of any intellectual property portfolio. Just as a trade mark is used to distinguish and identify the goods or services of one trader from those of others in the ‘real world’, a domain name performs this function online.

Once your domain name has been registered, we recommend that a domain name watching service is set up. This service alerts you when third parties attempt to register domain names which reflect their existing trade marks, or are confusingly similar to existing trade marks in an attempt to disrupt legitimate business activities.

About D Young & Co

D Young & Co is committed to providing the best intellectual property advice available, whether you are an SME or global business, and whatever your invention, technology or brand. The trade mark team has an impeccable track record in trade mark protection and enforcement. Clients range from innovative sole traders to global brand leaders in a broad range of industries. Particular areas of expertise include fashion, sport, entertainment, engineering/construction, media, FMCG, food and drink, life sciences, pharmaceuticals, cosmetics, financial services and luxury goods.

Contact Trade Mark Partner Richard Burton (rpb@dyoung.com) for further information.