Trade mark, intellectual property
A trade mark, otherwise spelt trademark or abbreviated TM, is a graphical sign or mark which uniquely identifies one company from another. Trade marks remain popular, in fact, in 2012 there were 545,791 trade mark applications from residences across Europe (including 2,704 in Ireland and 36,596 in the United Kingdom) . A consumer may build a connection, legally defined as under-taking, with a positive or negative experience: Trade marks allow economic growth because consumers can trust and purchase from a particular brand.
Trade mark application
IPO have self-explanatory steps to help enterprises search and apply for patents, visit their website to complete an application.
Classes categorise products and services and must be stated on an application. The classes you register your trade mark in are the only classes you can use your trade mark for. Research classes on IPO’s website (e.g. classes 9, 11, 34 and 42).
Avoiding a Europe-wide community trade mark (CTM)
Bainbridge, a Professor of Intellectual Property law, argues that a CTM looks interesting to a trader because one registration gives validly throughout each Member State within Europe. However, in reality an application will be refused if it conflicts against national registers. In other words, if an enterprise in Ireland has a trade mark for company-a which is also in the same class of goods or services, a CTM will be refused: A CTM, potentially, could be a waste of time and money.
You should consider applying for an application with the UK IPO and the Madrid Protocol, rather than a community trade mark.
How to register a trade mark in the UK?
You can complete and send an application to the national or regional trade mark office. This application will contain the sign or mark in full detail (including colour, if appropriate), in addition to, other features such as, illuminations, for example.
- Trade mark rights
• Persons cannot take Comphylo’s sign and fix it to goods and/or packaging
• Competitors cannot use Comphylo trade mark for marketing purposes
• Persons cannot use a similar (or identical) sign to Comphylo’s
- Trade Mark exclusions
- • It only contains the shape of peripheral devices
• Using a person’s own name and address
• Use to indicate the intended purpose of a product or service, for example, spare parts
• Use of an unregistered mark which is protected by the law of passing off
Law of Passing Off
Passing off is a common law (which is based on previous legal cases) that protects the goodwill of enterprises, along with, protecting the public from being deceived. The law of passing off is mainly used whenever one enterprise has no registered trade mark.
Misrepresentation stops the public from being deceived (e.g. competitor-x using Comphylo’s logo or name to sell their software, including slogans and visual images).
Similar to defamation and closely related to passing off, malicious falsehood, otherwise known as trade libel, occurs whenever a person publishes information which could destroy another enterprise, or their good(s) or service(s).
Trade marks are very powerful pieces of intellectual property. My next blog post will analyse trade mark infringement in terms of pay-per-click (PPC) systems.
Posted by Gerald Murphy
- Bainbridge, D., I. (1990) Introduction to Information Technology Law. 6th edition. Edinburgh: Pearson Education Limited.
- Johnson, H. (1995) ‘Trade Marks: The New Law’, Managerial Law, 37(4/5) pp. 1 – 59