What I have written here is not likely to answer your problems.  Indeed, I am not even going to attempt to do so for two specific reasons.  First, I don’t know what your problem is.  Second, what I say today may be out of date or even dangerously wrong by the time you read this, because law and practice are constantly evolving.  

This blog must be seen as no more than a very brief commentary on what a trade mark is, how it might be protected, and where to look for more detailed advice.   Your first port of call should be The Chartered Institute of Trade Mark Attorneys.  They are trained specifically to handle trade mark problems not only in the UK but elsewhere.  With very few exceptions (for other suitably legally qualified persons), any one claiming to be a qualified trade mark attorney or patent attorney ought to be on THE REGISTER OF PATENT AND TRADE MARK ATTORNEYS. 

I read economic history and economics at Strathclyde University then spent a year working for a publisher in Dundee before getting a job as a trainee in a Glasgow Patent Agency, I was not destined to become a patent agent but was a trade marks assistant training as a trade mark agent.  I started training in November 1969 and in March 1972 I qualified to become a member of what became the Chartered Institute of Trade Mark Attorneys .  I am no longer in full time practice but continue to act as consultant to a UK Chartered Trade Mark Atttorney practice based in York.

When I started training, we were operating under the Trade Marks Act 1938 which was repealed and replaced by the current Trade Marks Act 1994.  That was introduced mainly to bring UK law into line with the European trade marks directive (a precursor to the introduction of the EU trade mark registration system). A significant difference between the 'Old Act' (the 1938 Act) and the 1994 Act was that under the Old Act it had been the first person to start using a trade mark who was deemed entitled to it but the new 1994 Act followed European practice to make it the first to file an application who is deemed entitled to it.   This continues to be the case. 

Many people continue to think that the mere act of starting to use a trade mark gives them a right to it. This is not so.  Continued use and sales in the UK might eventually provide an element of protection but that is for another day.

This change to UK law came about because in the European countries who made up the then EEC which became the EU it was not the first user but the first to file an application to register it who was deemed entitled to it.  The change in the law was a necessary precursor to the EU TRADE MARK REGISTRATION.  Although continued use and sales in the UK over an extended period might eventually provide an element of protection it is much safer to work on the basis that your best protection is to get your trade mark registered as soon as possible after coining it.  Following Brexit the right of UK qualified practitioners to practice in the EU was withdrawn but some UK practitioners have subsidiaries in the EU. Other UK qualified attorneys are dual qualified and often have dual nationality.  I CONSULT FOR ONE SUCH PRACTICE.

What is a trade mark?

At risk of oversimplification, a trade mark must be capable of being graphically represented in such a way as to make clear precisely what is being protected and it must be capable of  distinguishing goods or services of one undertaking from those of other undertakings.

It may consist of words (including personal names and signatures), pictures, designs (which for some reason we called ‘devices’), letters, numerals, colours, sounds or the shape of goods, (subject to various provisos) or their packaging.

How are trade marks protected?

Most countries have legislation to confer a statutory monopoly on trade marks which have been registered with the relevant intellectual property office in accordance with local law.  In the UK that is the UK Intellectual Property Office (“UKIPO”) and in the EU trade marks can be registered either on a national (country by country) basis protecting individual countries or as a unitary registration deposited with the EUIPO protecting the whole of the EU. 

In the UK traders who have established a protectable goodwill in signs linked to or used in their business can seek a court order preventing other traders from “Passing Off” their goods or business as that protected by the goodwill.  Even so, it is important to recognise that in both the UK and the EU it is not the first trader to start using a trade mark who will be deemed entitled to its continued use but the first to register it in good faith. 

What can be protected.

A trade mark must be capable of being represented in a manner which makes it possible to determine precisely what is being protected, and be must capable  of distinguishing goods or services of one undertaking from those of other undertakings. 

There are “Absolute grounds” for refusal of an application set out in section 3 of the Act.  Read these because they are the grounds on which the UKIPO may refuse an application of it own volition. The IPO may refuse on the “Relative grounds” of refusal outlined in section 5 of the Act only if the owner of a relevant earlier right brings a successful opposition or makes a successful application to invalidate a registration on the basis of a relevant earlier right.

The IPO Manual of trade mark practice provides a lot of useful information. The IPO examiners will be as helpful as they can during the application stage but they are civil servants, not lawyers and in particular cannot advise you if your application is opposed or if you are threatened with a trade mark infringement action.  Chartered Trade Mark Attorneys are lawyers who have been trained and specialise in trade mark matters.  I used to be Chair of the examination board for students seeking entry on to the register of patent agents or the register of trade mark agents but the trade mark exams are now mainly university led (and patent agents have tended to be graduates in relevant subjects for many years.)

Both sets of practitioners are regulated by The Intellectual Property Regulation Board and are qualified to run relevant actions in the Intellectual Property Enterprise Court, and some of us are qualified to manage High Court or even Supreme Court actions.