In a previous blog post, we covered the basics of trade marks in the UK – what they are, how to search for existing marks, the registration process, and more.
But we know many more UK Trade Mark FAQs are surrounding these important brand protection tools.
As Chartered Trade Mark Attorneys, we’re regularly asked for guidance on nuanced or advanced trade mark topics.
James Manship, Chartered Trade Mark Attorney has provided his expert advice in response to 11 more UK Trade Mark FAQs to provide you with deeper knowledge on UK trade mark law and procedures.
More UK Trade Mark FAQs
1. How Can You Properly Use a Trade Mark Symbol?
When you have formally registered a trade mark, you can use the ® symbol alongside your brand name or logo.
For marks that are not registered but are being used as trade marks, the ™ symbol can be applied.
While this does not provide legal rights, it puts others on notice that you are claiming trademark rights.
Consistent use of these symbols over time can help strengthen your proprietary position in a brand.
Just be sure your use of the ® symbol matches the goods/services listed on your certificate of registration and that if you’re exporting internationally, to ensure that you have registered rights in those territories you are offering the goods and services.
2. Can a Trade Mark Become a Generic Term Over Time?
Yes, if the public starts commonly using your previously distinctive trade mark as the name for a general type of product or service, you risk losing your exclusivity. This process is known as “genericide”.
For example, Hoover, Lycra, and Linoleum were once protected marks in the UK/Europe that lost distinctiveness after becoming the household name for those items.
To prevent genericide, you must police use of your mark and consistently enforce your legal rights. This includes maintaining consistency in your marketing and monitoring how others in your industry refer to the type of goods you sell.
3. What Are Some Examples of Trade Mark Infringement?
If another party uses an identical or highly similar trade mark in relation to competing products or services, this creates a likelihood of consumer confusion and constitutes infringement.
Specific examples would include another clothing brand using your protected company name or logo, a food vendor selling meals under your restaurant’s trademark, or a carmaker naming a new vehicle model the same as your car.
In such cases of clear-cut confusing similarity, speak to a Chartered Trade Mark Attorney about sending a cease-and-desist letter or filing an infringement lawsuit.
4. How Did Brexit Impact Trademarks in the UK?
When the Brexit transition period ended on 31 December 2020, all existing European Union Trade Marks (EUTMs) were automatically cloned. This created equivalent UK registered trade marks (UKTMs), referred to as comparable marks, with the same filing and priority dates.
This cloning aimed to minimise disruption to IP rights. However, for any new applications, UK and EU trade marks now need to be applied for separately. Our Chartered Trade Mark Attorneys can deftly handle this new complexity for you.
5. When Should You Consider Voluntarily Abandoning a UK Trade Mark?
If your business decides to discontinue a certain line of goods or services, your corresponding trade mark could become vulnerable to removal on grounds of non-use.
Or if your once-distinctive mark loses this capacity to uniquely identify your commercial origin, voluntarily abandoning the registration may be the wise option. Abandonment can help avoid cancellation proceedings or infringement claims. Alternatively, you can consider allowing your registration to lapse naturally by choosing not to renew the rights at the next renewal deadline. Discuss your specific situation with a legal advisor to determine if abandoning makes strategic sense.
6. What Are Certification Marks and How Do They Differ from Standard Marks?
While ordinary trade marks show a single party’s exclusive right to use that mark in commerce, certification marks indicate that goods/services meet certain standards.
For example, the Woolmark® logo certifies clothing products are made of 100% wool. And the Fairtrade symbol means agreed ethical and environmental standards were followed.
The key difference is that certification marks guarantee set quality, material or mode of manufacture criteria rather than signifying the source of the product. These marks are used by many different trade sources, as opposed to a standard trade mark which helps consumers identify the single trade origin.
7. How Can a Registered Trade Mark Become Liable to Revocation?
If a trade mark is not used in the course of trade for all of the goods and services listed on the registration certificate for an uninterrupted five-year period following registration, it becomes vulnerable to revocation claims.
To avoid this fate, you must use the mark in connection with everything specified in your registration within every five-year window. Or be strategic by voluntarily removing unused portions when renewing your mark. Keeping organised evidence of use of the mark for all registered goods and services will make your Chartered Trade Mark Attorney very happy!
8. Can Slogans be Registered as Trade Marks in the UK?
Yes, slogans can potentially gain registered trade mark protection – but there are limitations. The slogan cannot be purely promotional in nature, as advertising phrases are not eligible. It would be unfair for a single company to have an exclusive right to a phrase such as “buy one get one free”.
Instead, the slogan must function as a unique identifier of commercial origin and clearly distinguish your goods/services from others on the market. Reach out for specific guidance on registering slogans.
9. In What Ways Can Confusion Arise Between Two Trade Marks?
Three common types of impermissible confusion between marks are:
Visual confusion: The overall look, fonts, stylization, colours or designs are so alike that consumers mix up the marks.
Phonetic confusion: The sound, pronunciation or cadence of conflicting marks misleads buyers into thinking they come from the same source.
Conceptual confusion: The ideas or meanings behind competing marks are so similar that shoppers associate them with a single company.
10. What Does a Trade Mark Assignment Involve?
This formal legal process transfers ownership of a registered trade mark from the current proprietor to a new entity. The Deed of Assignment document must be signed by both parties to formalise the transfer. From there, a notice of recordal is to be filed, to notify the Registry of a change of ownership.
Along with the mark itself, all associated goodwill and rights to damages/profits are assigned to the new owner. We can facilitate swift, secure trademark assignment.
11. How Can a Licence Help Protect a Trade Mark?
If you want to use the expertise of another company who want to use your brand name, then licensing your trade mark rights to a third party is a beneficial way monetise your rights without losing ownership.
Licence agreements underpin agreements. A Chartered Trade Mark Attorney will draft a licence agreement to ensure that both parties expectations are met and any remedies are agreed upon before a problem arises.
For personalised guidance on these issues or any other UK Trade Mark FAQs, please email mail@tennantip.co.uk or phone +44 1633 258792