Wed 18th Apr 2018

Trade Mark Jargon Buster - An A-Z of legal terms

Deceptive? Descriptive? Distinctive? Do you know the difference when it comes to trade marks? The Page White and Farrer trade mark team has put together a helpful glossary of terms for brand owners and brand managers.

A is for absolute grounds refusal. You cannot register a trade mark if it is devoid of any distinctive character, generic, or exclusively descriptive, unless it can be shown that it has acquired distinctiveness through extensive use.

 

A is for assignment. A registration is an asset that can be moved and sold for a financial profit.

 

B is for bad faith. A trade mark application filed in bad faith can be removed from the Register. Bad faith amounts to commercial sharp practice, such as an employee seeking to register a trade mark of their employer.

 

C is for cost. The cost of trade mark registrations depends upon the countries involved, the number of class categories of goods, the objections that arise (such as based on non-distinctiveness and due to earlier marks) and the number of trademarks of interest.

 

C is for counterfeits. Counterfeiting can amount to a criminal offence. Registering a trade mark puts you in a better position to deal with counterfeits.

 

D is for damages. The remedies for a successful infringement action include damages, or certain profits, delivery up and destruction of offending goods.

 

D is for deceptive. A trademark cannot be registered, if it is potentially deceptive e.g. a registration could be refused of a mark that contains the words Wool or Gold, if the consumer could rely on this element in the mark and the goods do not contain this feature.

 

D is for distinctiveness and descriptiveness. A trademark can be refused registration for being descriptive (e.g. Paris for perfume goods) or for being devoid of any distinctive character e.g. a basic geometric shape.

 

E is for EU trade marks. The cost-effective EU wide registration system gives rights across the EU. It is a single registration, easy to administer, renew and transfer.

 

F is for fake trademark correspondence. Third parties send official-looking fake invoices and correspondence about renewals to unsuspecting brand holders. You should check the genuineness of all correspondence and invoices before acting on it.

 

F is for forms. To register trade marks in the UK and EU, a number of on-line forms are useful.

 

G is for genericness. A trade mark can be refused registration and removed from the Register, if the trade mark consists of a common industry trade term that is generic. Words such as escalator and aspirin might be said to be generic.

 

H is for Hearings. In a UK IPO dispute you can request a hearing before a UK government hearing officer and usually you have the alternative option of having a decision made based on the papers filed.

 

I is for infringement. Action can be taken in the courts based upon a similar registered trade mark to seek to stop use.

 

I is for invalid. A trade mark registration can be removed after registration, on grounds of non-distinctiveness. It can also be removed based upon certain lack of use, bad faith, or due to there being earlier rights of other parties.

 

I is for IPO. The Intellectual Property Office is the government office that deals with the registration of patents, designs and trade marks, oppositions and invalidity actions.

 

J is for Journal. As part of the registration procedure, UK trade mark applications are advertised for a period of opposition in the official IPO Trade Marks Journal. In the UK this is a 2-month period, which can be extended by a further month.

 

K is for KitKat. The four-fingered shape of the KitKat bar was refused registration by the UK Court of Appeal, as it lacked sufficient distinctiveness. Even though it might be well-known, the public had not come to perceive the shape as a badge of origin, such that they would rely upon it alone to identify the goods as coming from a particular origin.

 

L is for letters before action. It is usually appropriate to send a letter, before commencing any legal dispute, not least to ascertain the other party’s position, to seek to resolve matters without court proceedings and to make it easier to recover legal costs, if you are ultimately successful.

 

L is for licensing. A trademark is a valuable business asset that you may wish to permit others to use, in exchange for royalty payments, by way of a licence.

 

L is for logo. A logo or image or design are potentially registrable as trademarks. Some logos might be seen as too basic or too generic e.g. A cow logo for dairy products.

 

M is for Madrid Protocol. The Madrid Protocol system for the international registration of trade marks by a single application, that is administered by WIPO, is a money-saving scheme for getting rights in many countries.

 

M is for mortgage. A trade mark registration is an asset, that can be mortgaged, charged, transferred, and licensed and so it is a valuable business property.

 

N is for non-use. If you do not use your registered trade mark for a 5-year period, it can be removed from the Register on the request of another party. If their action is successful, it will be removed from the Register for all goods for which no use is shown.

 

N is for notice. A Notice of Appeal can be filed in respect of most IPO decisions, if you wish to appeal. UK IPO decisions can be appealed to the Courts, or Appointed Person (a senior lawyer).

 

O is for opportunistic company names. You can object to company names at the UK IPO, if you have earlier goodwill. Various defences are available to such challenges.

 

O is for oppositions. A trade mark application can be opposed based upon the earlier rights of others. This might include trade marks on the Register and rights arising through use. UK trade mark applications can also be opposed based upon non-distinctiveness and bad faith.

 

P is for passing off. Where you have goodwill and another party makes a false statement as to origin affecting your goodwill and effectively amounting to deceptiveness, you can take action by a common law claim of passing off.

 

P is for priority claim. Any application filed within 6 months of the first filed application for that mark can take the same filing date, if it was in a Paris Convention country.

 

P is for procedure. The procedure in a UK trade mark application is that it is examined for distinctiveness, the list of goods is checked, and certain searches are carried out for earlier rights for information purposes only. If all issues are overcome, it is open to opposition for a 2-month period and, unless opposed, it proceeds to registration.

 

Q is for questions. If you have questions about trade mark registration, opposition and enforcement, you should contact trademarks@pagewhite.com.

 

R is for ® Sign. If a trade mark is registered in the jurisdiction for those goods, you can use the ® sign. Use ® sign without a trade mark registration is a criminal offence. In the UK, 'TM' sign simply indicates that you regard the sign as a trade mark, irrespective of whether it is registered. The legal position differs in other countries. In the UK, use of 'TM' and ® are optional.

 

R is for renewals. You can renew your registered rights once the registration period ends. Normally, this is a 10-year period.

 

S is for searches for earlier trademarks. It is advisable to carry out a search before using a brand, or filing a trade mark application, to reduce the risk of objections arising from other parties. It is possible to carry out searches of the trade marks register and for signs in use.

 

S is for seniority claims. Where you have a registration in an EU country, and an EU trademark for the same mark and overlapping goods, you can claim seniority from the national rights. This back-dates the rights in that country only to the date of the initial rights, even if you allow those rights to expire.

 

S is for shapes. You can register 3D marks and shape marks as trademarks, if they meet the requirements. You can also register sounds and smell marks, although these are rare.

 

S is for slogans. Slogans can be effective branding and marketing tools. They can be registered as trade marks, unless they are wholly descriptive, or non-distinctive in some way.

 

T is for trade marks. A trade mark is a badge of origin, i.e. a sign denoting that goods and services come from a particular entity. It can be a word, logo, slogan, shape, sound, smell, letter etc.

 

U is for unregistered trademarks. It is possible to enforce rights in an unregistered trade mark under the law of passing off in the UK. You need to show goodwill/reputation such that the other party’s use is a misrepresentation, likely to affect your goodwill. It can be costly to prove and the hurdle of showing what amounts to deceptiveness is high.

 

V is for value. A trade mark registration is an asset that can be valued and is an important business property. The value can be significant, when selling, or licensing your rights.

 

W is for WIPO system. There is an international registration system by which you can file a single application and choose from around 100 countries, those of interest to you. It is a single application which reduces cost, and it is easier to administer, renew, and transfer.

 

W is for watching. You can set up a watching service for later advertised applications, domain names and company names of others. You can then seek to object to them based upon your earlier rights.

 

X is for co-eXistence agreement. Many trade mark disputes are settled by way of an agreement, by which the parties agree the terms on which two marks will coexist and live together in the market, distinguishing them by goods, brands, or other factors.

 

Y is for why register trademarks? A registered trade mark is a weapon that can be used to stop others more easily and cheaply using certain similar brands and it is a shield, as a UK registration, (unless invalidated), amounts to a defence to an infringement action brought based upon another UK registration. A registration gives you more certainty, but no guarantee, that it is safe to use the trade mark.

 

Z is for Zynga. Zynga were sued by the owners of the Scrabble trade mark in respect of online games. The court held that Scrabble was not infringed by use of SCRAMBLE. There was no likelihood of confusion, as the signs had coexisted side by side with insufficient evidence of actual confusion. The court also said that when assessing similarity there is no minimum threshold and if there is some overall similarity, even faint, then it is necessary to carry out a global assessment, taking into account all relevant circumstances.

 

For advice on brand protection and trade marks in the UK, Europe and internationally, please contact James Cornish on 44 (0) 207 831 7929 or email james.cornish@pagewhite.com.

 

This briefing is for general information purposes only and should not be used as a substitute for legal advice relating to your particular circumstances. We can discuss specific issues and facts on an individual basis. Please note that the law may have changed since the day this was first published in April 2018.

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