Trade Marks: Their Usage and Importance

Article excerpt

Q: Why register a trade mark?

A: It is the most effective way of protecting the exclusivity of the reputation and goodwill associated with a particular product or range of products. Registration of a trade mark at the UK Trade Marks Registry gives the registered proprietor the exclusive right to use that mark in respect of the goods (or services) for which the mark is registered.

If another trader uses the registered mark (or a confusingly similar one), the registered proprietor of the mark can sue for infringement even though the other trader may have been totally unaware of the registration.

Its existence on the Register often deters others from choosing to use that mark when selecting a new brand name or from using the mark in comparative advertisements. Any business which regards its brand names, service marks, logos or other marks as valuable assets should protect those assets by registration.

Q: What can be registered as a trade mark?

A: It is commonly thought that only words or logos are registrable as trade marks, but in fact the range is much wider.

Registrations can be obtained for the get-up of a product (for example, the distinctive red and white get-up of a Marlboro cigarette packet), combinations of colours (for example, the green and red stripes of Gucci in respect of watches) and slogans (for example, Kentucky Fried Chicken's "It's Finger-lickin' Good".

However, to obtain registrations of these kinds, there must be evidence that the get-up, colours or slogan have become distinctive of a particular product or service.

Since the beginning of this year (under a new EC Directive), a range of more unusual marks may also be registrable provided they are in fact distinctive of a particular product. These include shapes (such as the shape of the "Jif" lemon), sounds and smells.

However, despite recent changes in the law, the Trade Marks Registry will still refuse registration of marks which are deceptive or offend morality or which are confusingly similar to marks already registered for the same or similar goods and services. …