What is a trade mark?

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Matthew Hall

© i p protection ® governance © policy ® compliance © commercialisation ® strategy

January 2016

in brief 45 classes of goods & services National coverage

Registered for 10 years Renewed for further terms of 10 years You obtain exclusive rights only in 2 ways:

-  use -  as a registered trade mark

provided the sign can be represented graphically, or described with sufficient certainty in words

CHANEL

Protects words,

images, colours, shapes,

sounds & other

“signs”

®

Grants exclusive right to use the sign on or in connection with the goods or services in respect of which it is registered

Protects the reputation (& value) in a “sign” that is used as a badge of origin

What is needed

®  Filed by the “owner”

®  Mark is distinctive (either inherently or acquired through use)

®  Is not “substantially identical” or “deceptively similar” to any other registration or earlier application for same/similar goods/services

®  Does not contain a “prohibited” sign

the “first user” of the mark on the goods or services Who is

the owner?

or the

“same kind of thing”

when used on a t-shirt: “an exhortation to relax”; it did not indicate provenance or any connection in trade

USE

a fundamental

concept in trade mark

law Used to distinguish between the qualities of these chips & those produced other than by way of

kettle cooking

DISTINCTIVE Must not be directly descriptive of character or quality or a term other traders have a LEGITIMATE right to

use to describe their similar goods or services

The trader must DO SOMETHING in its use to identify the sign as a

TRADE MARK

The fact that consumers associate (a colour) with (a trader) does not make (the colour) distinctive

Colours &

shapes

Will other traders think of the shape & want to use it for those significations?

SHAPES

What makes them

distinctive?

Does the shape have any ordinary significations?

For example, is it functional, or dictated by physical requirements?

Does the public rely on the appearance (of the shape or colour) ALONE to identify the goods? OR

Is the shape or colour separate from & additional to the goods?

Does the public recognise the appearance but does not treat that appearance as a trade mark?

What does it mean?

It is NOT an international registration

The Madrid system

or the

Protection is still obtained country by country

But protection is sought in multiple countries through a SINGLE application filed with the World Intellectual Property Organisation (WIPO)

Will other traders think of the shape & want to use it for those significations?

More on the

Madrid system

Does the shape have any ordinary significations?

For example, is it functional, or dictated by physical requirements?

®  Local rules for registration, and validity, continue to apply

®  Different countries charge different fees, in addition to fees charged by WIPO

®  All communications are co-ordinated through WIPO

®  An applicant only needs to engage local agents (& incur their costs) if local issues arise

© i p protection ® governance © policy ® compliance © commercialisation ® strategy

For more information, or any help, please contact:

Matthew Hall managing director

solicitor & registered trade mark attorney