Trade Marks & The Law

The fundamental purpose and function of trade marks is to provide consumers with the means to distinguish 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.

Trade marks also 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 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 the 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

A trade mark registration may be made in one or more of 42 classes of goods and services Trade Marks Act 1994 ('TMA'). A single application can encompass any number of classes of goods or services. Once an application for a trade mark has been made the Registrar will cause it to be published so that oppositions to it can be filed within a window period of 3 months. Third parties are also allowed to make "observations" on whether a mark should be registered or not without making a formal "opposition".

It is important to understand that once an application is made, all documents filed in support of that application are out in the public domain. Accordingly, any confidential commercial information which is included in order to support your stand that the mark is indeed distinctive must be carefully drafted so as to protect such business-sensitive information.

Trade marks do not require any inherent originality as in the case of copyright, patents, registered design or design rights. Moreover the actual use of a trade mark prior to registration does not in anyway diminish it as would be the case in respect of patents and registered designs.

Registration

When a trade mark is registered, it distinguishes your goods or services from your rivals and thereby avoids 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, marque or otherwise, it performs the same functions. It is even possible to register smells and sounds as trade marks even though these may be difficult to represent graphically.

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'.

Even if a mark is not at the time of registration 'capable of distinguishing' the goods or services as that of the owner, nevertheless it may be registrable if it will become distinctive in use and will afford an indication of origin without interfering with the legitimate freedom of other traders. In other words, it is capable of becoming distinctive later on.

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, confidentiality and design rights which do not require...