Trade Marks

Jane Lambert










27 May 2010  Revised 5 April, 26 May 2017, 15 Oct 2018, 8 Jan 2021 and 17 Jan 2026

A trade mark is a sign capable of distinguishing the goods or services of one supplier from the goods or services of others. It may consist of personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds.

Function of Trade Marks 
Trade marks benefit both consumers and suppliers.  Trade marks benefit consumers by giving an assurance of origin, which in many cases is tantamount to an assurance of quality. They benefit suppliers by providing a focus for advertising and distribution.

Legal Protection
There are two ways of protecting a trade mark:

UK Trade Marks
Signs may be registered as UK trade marks with the Intellectual Property Office (“the IPO”) under the Trade Marks Act 1994.  Marks are registered for specified goods or services that fall within a number of internationally agreed classes. 

EU Trade Marks
It is possible to register a sign as a European Union trade mark ("EUTM") with the European Union Intellectual Property Office ("EUIPO") pursuant to Council Regulation (EC) 2017/1001 of 14 June 2017 on the European Union Trade Mark ("the EU trade mark regulation").   The EUTM ceased to apply to the UK on 31 Dec 2020.

Registration of Trade Marks elsewhere
An application to register a sign as a trade mark for other countries or territories may be made directly to the intellectual property office of the country concerned or to the World Intellectual Property Organization ("WIPO") for countries that are party to the Madrid Protocol 

Effects of Registration
Registration of a sign as a trade mark confers upon the person who has registered the mark ("the registered proprietor") the right to prevent others from using the same or similar sign in respect of the same or similar goods or services or from using the same or similar sign in such a way as to take unfair advantage of the reputation of the mark or be detrimental to its distinctive character or repute (see Jane Lambert Trade Mark Registration 1 Dec 2016 NIPC Branding).

Enforcement
In England and Wales, claims for infringement of a registered trade mark or an action for passing off may be brought in the Chancery Division of the High Court or the County Court.  

Claims for infringement of an EUTM have to be brought in an EU Trade Mark Court. While the UK was an EU member state, the High Court and the County Court were designated as EU Trade Mark Courts. They ceased to be EU Trade Mark Courts on 31 Dec 2020.

Further Reading

Jane Lambert  Trade Marks FAQ  12 Aug 2016 NIPC News

Jane Lambert Auntie Jane's Trade Mark Tips: No. 1 - The Very Basics 8 June 2017 NIPC Training

Jane Lambert  Effect of Registration  1 Dec 2016  NIPC Branding

Jane Lambert  UK Registered Trade Marks  13 June 2017 updated 17 Jan 2026 NIPC Law

Jane Lambert  UK Trade Marks: Rights Conferred by Registration 16 Jan 2026 NIPC Law

Jane Lambert EU Trade Marks  14 June 2017 updated 13 Jan 2021 NIPC Law

Jane Lambert Passing off  27 May 2010, updated 17 Jan 2026 

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