Why register a trade mark?

Registration of a trade mark gives you the exclusive right to use it in your market sector. You can take legal action against competitors who might, inadvertently or otherwise, use a conflicting mark in relation to the same or similar goods/services to those protected by your registration.

Legal action based on enforcement of unregistered rights, generally known as ‘passing-off’, is much more difficult and costly to pursue than an action for infringement of a registered trade mark.

Registration is the only way to protect an unused mark. A trade mark registration is a type of property, which can be bought and sold, licensed and borrowed against. Licensing the rights under a trade mark registration can be an effective way of generating a revenue stream.

Trade mark law favours the first to register a trade mark, rather than the first to use a mark. Therefore, by using an unregistered trade mark, you run the risk that a third party may register a conflicting mark. This can lead to allegations of trade mark infringement, which would be time consuming and expensive to counter. It could also harm the credibility of your business.

To be acceptable for registration, a trade mark must be:

• a sign (words, devices/logos, letters or numerals, slogans, and less traditional forms such as shapes, sounds, colours, patterns, holograms, smells, motions or positions)
• capable of distinguishing the goods or services of one undertaking from those of others
• capable of being represented in a way that allows the competent authorities and the public to determine the clear and precise subject matter of protection

Whilst it’s desirable to have a trade mark which directly suggests the goods or services (the easiest way to educate customers about what’s being offered), such terms do not make inherently strong trade marks and are likely to cost more to protect and enforce.

Some things that don’t constitute a trade mark include:

• terms which are non-distinctive
• terms which describe the products, services, or their qualities