Trade Mark Dictionary Of Terms

Trade Mark Dictionary

Absolute Grounds

These grounds will be considered by an Examiner on receipt of a trade mark application. They include but are not limited to the following:

• marks which are devoid of any distinctive character;
• marks which consist exclusively of signs or indications which may describe the kind, quality, quantity, intended purpose, value, geographical origin, or other characteristics of goods or services;
• trademarks which consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade.

A mark shall not be registered as a trademark if it consists exclusively of:

• the shape which results from the nature of the goods themselves;
• the shape of goods which is necessary to obtain a technical result;
• the shape which gives substantial value to the goods;
• contrary to public policy or to accepted principles of morality;
• of such a nature as to deceive the public (for instance as to the nature, quality or geographical origin of the goods or service).

A trademark shall not be registered if the application is made in bad faith.

Acquired Distinctiveness

A descriptive mark can only be registered if it has ‘acquired distinctiveness’. This is achievable through its use, although proving that ‘acquired distinctiveness’ has been achieved usually relies on sales figures and advertising budgets.

Application

A trade mark can be registered by making an application to the official trade mark authority in the particular country the mark is to be registered. For example the UKIPO in Great Britain, through a European (OHIM) or international route (WIPO). The application can be made on line or in paper form and particular costs apply to each individual application.

Assignment

The transfer of ownership of a trade mark to someone else (buying or inheriting). This includes any change of ownership as a result of company mergers. Assignment of registered trade marks should be promptly recorded at the UKIPO or certain rights may be lost until recordal is completed.

Bad Faith

Conduct before the UKIPO or in relation to a trade mark that indicates behaviour or practices that is questionable.

Certification Marks

Certification marks indicate that someone is a member of a particular organisation and it is a specific type of mark. They provide a guarantee that a certain standard as been achieved. An example of a certification mark is the BSI Kite Mark certification symbol.

Classification

In order to identify all goods and services a database has been devised which divides goods and services into particular classifications. All goods are classified into numbers 1 to 34 and all services are to be found in numbers 35 to 45. For example a popular class is class 25: clothing, footwear and headgear. Multiple classes can be selected.

Collective Marks

These are specific types of trade marks which indicate that the goods or services bearing the mark originally come from members of a trade organisation rather than one trader.

Community Trade Mark

Trade mark protection in Europe. A European Community trade mark can be applied for through the European route via the Office for Harmonisation in the Internal Market (OHIM). The Community trade mark gives protection in all European Union countries.

Companies House

Where companies register in Britain. A common mistake is to think that a name is protected because it has been registered at Companies house; this is not the case and Company Law is different to Trade Mark Law. If a name is available at Companies House it may not be available or suitable for the Trade Mark Registry and vice versa.

Cooling Off Period

A period available to parties in adversarial proceedings before the UKIPO or OHIM which suspends the normal time limitations to allow the parties the time to settle the dispute.

Counterfeiting

If someone deliberately uses a registered trade mark, without the knowledge or consent of the owner they may be guilty of the crime of counterfeiting.

Deceptive

Marks that in some way deceive the public cannot be registered especially in terms of quality.

Distinctive

A mark must be distinctive before it can be accepted for registration by the UK Intellectual Property Office. This means that a word, logo, picture or other sign that will clearly identify goods or services from those of other traders. The most distinctive trade marks are those that consist of made up words.

Enforcement

A registered trade mark can be identified by using the ® symbol or the abbreviation ‘RTM’ above the left hand side of the mark. It is not compulsory to use this. It is however illegal to use the registered symbol if a mark is not registered. The abbreviation ‘TM’ can be used against any mark whether it is registered or not.

European Route

If trade mark protection in countries which are members of the European Union is required an application can be made for a Community Trade Mark (CTM) through the Office for Harmonisation in the Internal Market (OHIM) based in Alicante, Spain. An application covers the following countries: Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden and the United Kingdom.

Examination

The procedure conducted by the UKIPO to ensure that any application meets the minimum threshold for registration.

Exhaustion Of Right

Once a trade mark has been applied to goods or services by its owner or with its authority, the owner's rights are said to be exhausted within the European Union. This means that the owner cannot object to dealings in his goods or services as a result of his trade marks rights except in very limited circumstances.

Honest Concurrent Use

An unregistered trade mark which would otherwise conflict with earlier trade marks and earlier rights but has been used concurrently with those earlier trade marks and rights. In certain circumstances such unregistered trade marks may be registered.

Infringement

If an identical or similar trade mark for identical or similar goods and services to a registered trade mark is used an infringement of the registered mark may occur. This includes the case where because of the similarities between the marks the public are led to the mistaken belief that the trade marks, although different, identify the goods or services of one and the same trader.

Where the registered mark has a significant reputation, infringement may also arise from the use of the same or a similar mark which, although not causing confusion, damages or takes unfair advantage of the reputation of the registered mark. This can occasionally arise from the use of the same or similar mark for goods or services which are dissimilar to those covered by the registration of the registered mark.

It is always sensible to seek legal advice in these situations.

International Route

This can be made by applying to register a trade mark through the international route in countries which are party to the Madrid Protocol through the World Intellectual Property Organisation (WIPO). Currently more than 70 countries are members, including the United States of America, Australia and members of the EU.

A mark can also be registered in a particular country. This can be done whether the country is in the Madrid Protocol or not. However if a number of countries wish to be registered in, it is often best to apply through the Madrid Protocol as long as the country required is a signatory to the agreement.

An International application must be based on an application in one of the member countries. If applied through the UK office, an international application must be based on a UK trade mark application or registration. This can be filed at the same time as a UK application, or later if required.

Internet Domain Names

Domain names must be registered with an accredited registrar. Being the owner of a registered trade mark, does not automatically entitle that mark to be used as a domain name. Also if a domain name has been properly registered, it does not automatically mean that a similar trade mark will satisfy the requirements for trade mark registration.

Licensing

Permission to use someone else’s trade mark. Licences are normally granted in return for royalty payments and are for limited periods of time.

Madrid Protocol

A trade mark can be registered in countries which have signed up to an agreement, known as The Madrid Protocol. The Madrid Protocol is controlled by the World Intellectual Property Organisation (WIPO).

Mortgaging

A trade mark as security for a loan. The mortgagor has a legal right in the trade mark until the loan is repaid.

Non Descriptive

A registered trade mark must not describe the goods or services it is offering. For example ‘The Coffee Shop’ for a coffee shop.

Offensive

Certain offensive marks will not be accepted for registration.

OHIM

Office for Harmonisation in the Internal Market.

Opposition

The procedure where a third party may formally object to an applicant's application for a trade mark.

Passing Off

The common law term given to an action where a mark is being used without the owner’s permission. The mark in question has not been registered.

Protected Emblems And Symbols

Certain marks cannot be used and cannot achieve a trade mark. Such marks are protected by Article 6 of the Paris Convention for the protection of industrial property. For example there are certain flags and Royal Coats of Arms that cannot be used as trade marks.

Protection

The best way to protect a trade mark is through the process of registration. This protection allows legal action against anyone who uses a trade mark without the owners’ permission.

Publication

All UK trade mark applications and registrable transactions are published in the Trade Mark Journal.

Register

All registered trade marks appear on a trade mark registry in the country of their origin. In the UK for example all marks that have been registered will appear on UKIPO’s online register. This can be found at www.ipo.gov.uk

Registration

Registering a trade mark gives the owner the exclusive right to use the mark for the goods and/or services that it covers in the country where the mark has been registered or in a number if countries if the application has been made through OHIM or WIPO.

If a registered trade mark has been obtained the ® symbol next to it to warn others against using it can be used. It is easier to take legal action against the infringement of a registered trade mark, rather than having to rely on passing off.

Renewal

A trade mark can be renewed for ever. To keep a trade mark in force, it must be renewed on the 10th anniversary of the filing date and every 10 years after that.

Revocation

An action to remove a registered trade mark for certain reasons that have arisen since the trade mark was registered and include that it has not been used for a period of 5 years since its registration and that it is misleading or become the common name for the goods or services for which it is registered.

Search

It is through the searching process that it can be revealed whether a proposed mark is capable of registration. The point of the search is to ascertain whether or not there exists an identical or similar mark registered in the same or dissimilar classes.

Series Of Trade Marks

It is possible for an application for a trade mark to contain a number of trade marks as long as those marks are materially similar; i.e. the use of different fonts.

Similar

If two marks are similar in looks for the same goods or services or sounds the same to similar goods or services it may not be possible to register the mark.

Trade Mark

This is any sign capable of graphical representation which can distinguish the goods and services of one undertaking from those of another. Traditional trade marks consist of words, names, signatures, logos, numbers, signs or designs. A trade mark is useful to differentiate one product from another. It can be used as a clever marketing tool so customers can identify and recognise particular products. Non-traditional trade marks are harder to secure, but can consist of sounds, smells and shapes.

A trade mark can be registered or unregistered.

Three Dimensional

Three dimensional trade marks will not be accepted for registration.

UKIPO

UK Intellectual Property Office protecting the four main types of intellectual property: patents, trade marks, designs and copyright.

Unregistered Trade Marks

If a trade mark denotes particular goods or services but has not been registered then it is still a trade mark although it is not permitted to use the registered symbol ®. It may still be possible however to obtain some protection if it can be proved that the mark has been used for a certain period of time, built up a reputation and has been harmed in some way by another person’s use of the mark. This is more difficult to prove however than if though the registered trade mark route.

WIPO

World Intellectual Property Organisation (WIPO), which is based in Geneva, Switzerland.