Who am I, and what do I know about trade marks and how many of your problems is this going to resolve.

What I have written here is not likely to answer your problems.  Indeed, I am not even going to attempt to do so for a number of reasons.  I don’t know what your problem is.  The law (and practice) are constantly evolving either because of developing legal precedent or because of changes, possibly following UKIPO led consumer consultation so what I say today may be out of date or even dangerously wrong by the time you read this.  

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. 

I read economic history and economics (with some sociology and politics thrown in) before discovering that my degree would not be recognised at that time for teaching history in Scottish Senior Secondary schools for which apparently I should have taken political rather than economic history (with politics and sociology thrown in for fun) , so I had to look for alternative employment. I  spent a year working for a publisher in Dundee then as the only member of a graduate training scheme set up by what proved to be a failing supermarket chain in the Glasgow area.  Eventually, I applied for and got a job as a trainee in a Glasgow Patent Agency.  (Applied for as an alternative to becoming an advertising agent mainly because my then wife's Uncle Willie had been a patent agent and the family agreed it had never done him any harm! )  Unbelievably I was 6 weeks into the job before I discovered that I was not destined to become a patent agent but as a trade marks assistant I would train as a trade mark agent. 

I started training in November 1969 and in 1971 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 European Trade Mark Attorney practice based in Dublin and to a UK Chartered Trade Mark Attorney practice based in York.

At that time we were operating under the Trade Marks Act 1938 which was repealed and replaced by the current Trade Marks Act 1994 which was introduced mainly to bring UK law into line with the European trade marks directive (a precursor to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 and its continued use but the new 1994 Act followed European practice to make it the first to file an application who is deemed entitled to it.   

In most European countries (certainly those 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. This somewhat draconian point of view brought a degree of certainty to what in the UK often became a messy and unwieldy argument, sometimes settled on the basis of proof that one trader had stated using a trade mark a matter of days before another.   For many years afterwards I was faced with what continued to be seen by laymen (and some lawyers who should have known better) as the 'irrefutable' argument "but I/my client started using it first!"  (Just to keep things interesting for those who may be losing interest, there continue to be circumstances when it is the first user of a trade mark who is entitled to its continued use). 

What is a trade mark?

The UK 1994 Act defines a trade mark as “any sign which is capable of being represented in the register in a manner which [makes it possible] to determine the clear and precise subject matter of the protection afforded to the proprietor, and [being capable] of distinguishing goods or services of one undertaking from those of other undertakings.”  My working definition of  a trade mark is that which is capable of graphical representation and serves to distinguish the goods or services of one trader from those of others. 

A trade mark 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.  As discussed above, 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 has been, or is to be, protected, and be 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, (these 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 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.  They are regulated by The Intellectual Property Regulation Board and are qualified to run trade mark and design right actions in the Intellectual Property Enterprise Court. Some of us are qualified to manage High Court or even Supreme Court actions.