| The fundamental purpose and function of trade | | | | Defences |
| marks is to provide consumers with the means to | | | | There are a number defences available to |
| demarcate the goods and services of one trader | | | | competitors to lawfully use the registered trade |
| from another. It allows consumers to recognise your | | | | marks of rivals in certain circumstances. The most |
| products or services as yours alone and thus avoid | | | | significant one is the allowance given to fair use. |
| confusing it with the products or services of a | | | | Under section 10(6) it is lawful for a competitor to |
| competitor. Trade marks provide an exclusive way in | | | | use the trade mark of a registered proprietor |
| which your goods or services can be identified as | | | | ‘for the purpose of identifying goods or services |
| originating from you. | | | | as those of the proprietor’ or his licensee, |
| Furthermore, trade marks reflect certain attributes | | | | provided it is ‘in accordance with honest |
| and qualities which consumers can identify with | | | | practices in industrial and commercial matters’. |
| certain products and services and so be given a | | | | This provision is designed to allow competitors to use |
| sense of assurance that their requirements of quality | | | | the trade mark of another for the purposes of |
| and taste will be met. | | | | comparative advertisement. However, the use of |
| Independent of the above, shall we say, traditional | | | | such trade marks must be fair. The question of when |
| functions and purposes of trade marks - given that | | | | a use of another’s trade mark is fair has been |
| businesses have invested enormous resources to | | | | visited by the courts a number of times since the |
| develop and market not only their goods and | | | | passing of the TMA in 1994. An important case in this |
| services but also the brands which are associated | | | | context is Barclays Bank v RBS Advanta [1996] RPC |
| with them – they also fulfil an ‘advertising | | | | 307 where Laddie J concluded that a plaintiff could |
| function’. It is a function that needs to be | | | | not succeed simply by showing that the defendant |
| protected in same way as the function of identifying | | | | was taking ‘unfair advantage’ of the trade |
| where the goods or services originate (i.e. one trader | | | | mark. He needed to show that there was |
| as opposed to another) and the function of assuring | | | | ‘material dishonesty’ before he could |
| quality and taste. | | | | succeed in establishing that there had been |
| Registered Trade Marks | | | | ‘unfair’ use. Subsequent cases have given |
| When a trade mark is registered under the Trade | | | | rise to the objective standard of the “reasonable |
| Marks Act 1994 (‘TMA’) it distinguishes your | | | | reader” to ascertain whether a use is |
| goods or services from your rivals and thereby | | | | ‘material dishonesty’ and therefore unfair. |
| obviates confusion with other products or services. In | | | | Europe Wide Registration |
| other words, it protects against deceptiveness as to | | | | Traditionally, one of the problems with the trade |
| origin. It does not matter whether a trade mark is | | | | marks registration system is that it is territorial. This |
| represented as a logo, brand, signature, name, | | | | means that if you register in the UK, protection is |
| picture, shape, slogan, jingle, colour, word, marquee | | | | only afforded in the UK and nowhere else. If you |
| or otherwise, it performs the same functions. | | | | wish to get protection in France as well, for example, |
| Section 1(1) of the TMA defines a trade mark as: | | | | you must also register the trade mark in France. |
| ‘any sign capable of being represented graphically | | | | However, it is now possible to register a trade mark |
| which is capable of distinguishing goods or services of | | | | on a Europe wide basis by just making one |
| one undertaking from those of other | | | | registration which will grant protection in any one of |
| undertakings’. | | | | the fifteen member states. This known as the |
| In order to avail oneself of the protection granted to | | | | Community Trade Mark. A Community Trade Mark |
| trade marks under the TMA, it is necessary first of | | | | provides protection by means of a single registration |
| all to make sure that the trade mark is properly | | | | covering the whole of the European Union. |
| registered. This may be to state the obvious but | | | | Registration of a Community trade mark is granted |
| there is often confusion with other intellectual | | | | by the Office for the Harmonisation of the Internal |
| property rights like passing off, copyright, confidential | | | | Market (Trade Marks and Designs) which is located in |
| information and design rights which do not require | | | | Alicante, Spain. |
| registration. Such registration grants the registered | | | | This Europe wide registration is not really a unified |
| proprietor the ‘exclusive rights in the trade mark | | | | registration system but an application deposited to |
| which are infringed by the use of the trade mark in | | | | seek protection in a number of nominated separate |
| the [UK] without his consent’ [section 9(1)]. | | | | territories. It avoids the preparation and filing of |
| Registration grants a statutory monopoly to use of | | | | separate applications in each country for which |
| the mark. This means that the registered proprietor | | | | protection is required. The trade marks laws which |
| can use the registration to prevent others from using | | | | apply to each such countries would be different |
| the same or similar mark on the same or similar | | | | Trade Mark Licensing |
| goods or services. | | | | Under section 28 of the TMA it is possible to license |
| Infringement | | | | to use a registered trade mark on a general or limited |
| Secondly, the defendant’s use of the trade | | | | basis or on an exclusive or non-exclusive basis. So, |
| mark must fall within the definition of infringement as | | | | trade mark owners are able to authorise others to |
| outlined under section 10 of the TMA. A defendant | | | | use their trade marks any practically any terms that |
| can be said to have infringed a trade mark in the | | | | they see fit. Trade mark licences should be in writing, |
| following circumstances: | | | | and exclusive licences must be in writing. |
| ¨ If he uses in the course of trade a sign which is | | | | Trade Mark Infringement |
| identical with the trade mark in relation to goods or | | | | When a business uses a trade mark without the |
| services which are identical with those for which it is | | | | permission of the proprietor of the trade mark, |
| registered | | | | continued use of the trade mark may be prevented |
| ¨ If he uses in the course of trade a sign where | | | | by the grant of an injunction, and losses suffered by |
| because it is identical with or similar to the trade | | | | the trade mark owner occasioned as a result of the |
| mark and is used in relation to goods or services | | | | infringement may be remedied by an award of |
| similar to or identical with those for which the trade | | | | damages. |
| mark is registered, ‘there exists a likelihood of | | | | Conclusions |
| confusion on the part of the public, which includes the | | | | Trade Marks play a fundamental role in protecting |
| likelihood of association with the trade mark.’ | | | | business names, product names and the names |
| ¨ If he uses in the course of trade a sign which is | | | | attributed to services by business. In the event that |
| identical with or similar to the trade mark, and is used | | | | another business copies a trading name, the original |
| in relation to goods or services which are not similar | | | | business is left only with rights granted by the law of |
| ‘where the trade mark has a reputation in the | | | | passing off, which generally requires substantial |
| [UK] and the use of the sign without due cause, | | | | evidence of trading activity and extensive marketing, |
| takes unfair advantage of, or is detrimental to, the | | | | in order to overcome the threshold requirements for |
| distinctive character of the repute of the trade | | | | goodwill and reputation, which in essence is what the |
| mark.’ | | | | tort of passing off protects. |
| Duration | | | | As trade marks represent the unique identity of a |
| The life of a registered trade mark is ten (10) years | | | | business, product or service, trade marks should |
| from the date of registration, unless it is renewed. If | | | | form a central part to preserving brand identity of |
| properly managed and administered the duration of a | | | | capital investment in promoting the business. |
| registered trade mark may be “forever”. | | | | Supposing two identical businesses that have been |
| However, if a trade mark owner fails to renew a | | | | trading successfully for a number of years, and one |
| trade mark on time, it may be removed from the | | | | has a registered trade mark and the other does not. |
| Register. Accordingly, it would be prudent to engage | | | | If each of these businesses is the victim of another |
| a reputable trade mark attorney to ensure that your | | | | business copying their trading name, the business |
| trade mark is carefully monitored and regularly and | | | | with a trade mark will almost invariably be in a |
| properly renewed. | | | | superior position to protect the exclusivity of its |
| The Register | | | | trading presence. In effect, it may be the difference |
| The Register of Trade Marks of available for | | | | between not being in a position to protect their |
| inspection at The Register displays current | | | | brand presence due to the more onerous evidential |
| information and the status of all registered trade | | | | requirements required by making out a case for |
| marks in the UK and those registered with the | | | | passing off. |
| European trade marks office, known as OHIM. | | | | |