Trade Marks

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

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 make:

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").   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.

Enforcement
In England and Wales, claims for infringement of a registered trade mark may be brought in 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 creased to the EU Trade Mark Courts on 31 Dec 2020.

Further Reading


Date
Author
Title
Publication
14.06.2017
Jane Lambert
NIPC Law
13.06.2017
27.05.2017
04.04.2017

01.12.2016
NIPC Branding
12.08.2016
NIPC News

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