Trade Marks which have not been Registered

Trade marks

What is a trade mark?

A trade mark is a sign or logo that distinguishes the goods and services of one company from the goods and services of their competitors.

Under UK law a trade mark can be registered with the UK trademark and Intellectual Property Office providing legal protection in the UK for that mark.

If a trade mark has been registered this will give legal protection for that mark against any other company or person using that logo.

Are all trade marks able to be registered?

The Intellectual Property Office will refuse to consider trade marks that are not distinctive, are similar to existing trade marks or have become customary in your line of business.

Also trade marks which are offensive, illegal or deceptive will be refused.

The Intellectual Property Office may accept made up words as trade marks but it may not accept misspelled words such as “fone” instead of telephone.

The Intellectual Property Office also many not accept words with “.com” or “.co.uk” or something similar.

Should I register my company name as a trade mark?

An individual business should always register their company name as a trade mark.

What is the reasoning behind this?

If a company does not register their company name or logo as a trade mark then it will open up the potential of another company using the name or logo. There is certain common law protection in this area but it is often an unreliable option. It is therefore imperative that companies register their company names and logo’s as a trademark.

What protection does the law provide for unregistered trade marks?

It is possible to have an unregistered trade mark. This may apply to a trade mark which has been refused to be registered or one whereby the decision was taken not to register the mark.

If an individual or company chooses not to register their trade mark – otherwise known as their brand – they may still be able to take legal action if someone else uses the mark without their permission.

How is this done?

This will be done using the common law action of passing off.

What must be shown to use passing off?

To be successful in a claim for passing off the claimant must prove the following:

•       That the mark is theirs  
•       That they have built up a reputation in the mark
•       That they have been harmed in some way by the other person using the mark

If there is a potential legal claim using passing off, does this mean that I don’t need to register my mark?

Although the claim of passing off exists in relation to an unregistered trade mark it can be very difficult and also expensive to prove an action of passing off. In many cases a huge amount of evidence needs to be provided in order to establish the three elements of the claim.

Accordingly if a trade mark is registered it will be much easier for an individual or company to take legal action against an infringement to that trade mark rather than simply relying on a claim of passing off.

Is there anything else I should be aware of when deciding to register my company name?

The potential for infringement of company names is heightened in relation to domain names. As is stated above the Intellectual Property Office may not accept trade mark applications containing the words “.com” or “.co.uk” but the name of a business will be able to be registered.

This often means that individuals will try and purchase internet domain names containing the name of a specific company with the idea of selling it to the company to make a significant profit – this practice is known as Cyber-squatting.

Can I do anything to stop this?

There are a number of different dispute resolution procedures in order to deal with the issue of cyber-squatting. In the majority of cases the rights holder – the person who has the Intellectual Property in the name – will succeed in a claim against the cyber-squatte.

This again highlights the need for a company name to be registered as a trade mark. If a business decides simply to have the company name protected as an unregistered trade mark relying on passing off then it will be much more difficult to succeed in a case of cyber-squatting. If the trade mark is registered then they will be able to prove more successfully that they hold the Intellectual Property Rights to that name.