chapter 2

Trademark Registration

Trade–mark

Definition

Any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

—S. 1 Trade–marks Act

In the competitive and constantly changing digital marketplace, a trademark is a very valuable asset. It differentiates your business and the quality of your products from those of your competitors. Your trademark carries your reputation with it, and reinforces long-term relationships with your buyers. These marks are unique identifiers and are also referred to as “logos” or “brands.”

It’s important to be aware of trademarks not only to protect your rights, but also to ensure that you’re not infringing on the rights of others when creating one. The Intellectual Property Office (IPO) is responsible for registering and enforcing your rights as a mark holder. They’re a resource you can access to gather information, ask questions, check the registry of current marks and begin the registration process.

The Trade Marks Act is the federal legislation that defines which marks can be protected by law, as well as outlining your rights as a trademark holder and how to enforce them.

Before registering your mark formally with the IPO, check its registry to make sure your mark is unique. Undergoing this step will increase the chances that your mark will be approved and ensure that it’s unique and distinguishable.

There’s no legal requirement for you to register your trademark, but there are benefits for your brand if you do. Registering your mark gives you the exclusive right to use it in the U.K. In the event that someone does use your mark, it’s easier for you to take legal action because the registration is enough proof that you own the mark.

You Can Register

(i) A mark that is distinctive for the goods or services you provide.

(ii) Words, graphics or
a combination of both.

(iii) Shape of goods or packaging.

 

You Cannot Register

(i) A mark that is not distinctive.

(ii) A mark that describes the goods or services — examples include marks showing quality, quantity, purpose or origin of your goods.

(iii) A mark that is offensive, deceptive or has protected emblems.

If you don’t register your mark, you can’t take action for infringement. An unregistered mark holder can only enforce their rights on the basis of "passing off" or via proceedings under the Fair Trading Act, but these avenues are difficult and expensive to prove. A trademark is an asset to your business that is worth protecting, and registering your mark is the best way to do that.

Always remember that the law is fluid and subject to change. Although trademarks are an established area of the law, be sure to stay informed about the changes relevant to you and your business. The IPO is a good resource for keeping up to date and ensuring that your rights are maintained. Trademarks are valuable assets, and it’s up to you to capitalize on and protect this aspect of your brand.

Registered

(i) Property that can
be sold or licensed.

(ii) Allows criminal charges
to be laid.

(iii) Deters others from using it.

 

Unregistered

(i) Using your mark for extended time can provide rights.

(ii) More difficult to
bring legal action.

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