Trademark registration

10 Things Webmasters Should Know About ... Trade Marks Brands are critical to most businesses and can be worth millions even billions - think Microsoft or Coca-Cola. On the internet branding assumes especial importance not least because brands can be incorporated into domain names. The value inhering in a brand is protected by trade mark law; and it is sensible for webmasters to have at least some familiarity with this area of law. This article is primarily concerned with UK trade mark law. There are two main kinds of trade marks: registered trade marks which are protected by the law of registered trade marks and unregistered trade marks which are protected in the UK by the law of passing off. This article is concerned only with registered trade marks. There are also two principal kinds of registered trade mark under UK law: UK trade marks and Community Trade Marks (CTMs). UK marks only cover the UK while CTMs cover the whole of the EU. Much of the substantive law of trade marks has been harmonised across the EU and many of the laws governing the two kinds of trade mark are therefore similar in the different Member States. In order to keep things simple this article focuses upon UK marks rather than CTMs. (1) What is a trade mark? A trade mark is defined in the Trade Marks Directive* as "any sign capable of being represented graphically particularly words including personal names designs letters numerals the shape of goods or of their packaging provided that such signs are capable of distinguishing the goods and services of one undertaking from those of other undertakings". The essential function of the trade mark is to guarantee the origin of goods and services; and the law of trade marks has been designed to promote that essential function. If you are unsure whether a sign is a trade mark ask yourself whether it has this essential function. Domain names used in the course of a business are in one aspect being used as trade marks. One of the most important features of trade mark protection is that it relates to specific goods and/or services. Consequently a single sign may be registered by different companies in respect of different goods and services. (2) The art of search Before you choose a trade mark for your business (e.g. choosing a domain name or a name for a new product or service) it is usually sensible to conduct some kind of trade mark search to determine whether your proposed mark might infringe another's rights. At the very least you should search using the major search engines for examples of actual use and search at the key trade mark registries. For instance a UK business providing services in the EU and the US should search at the UK Intellecutal Property Office (www.ipo.gov.uk) the Office for Harmonization in the Internal Market (www.oami.eu) and the US Patent and Trade Mark Office (www.uspto.gov). Searches should cover the actual proposed mark and any obvious variations (e.g. of spelling). If the new mark will represent a significant investment you should consider instructing a trade mark professional to conduct the search. (3) Infringement You may infringe a registered trade mark if you use in the course of trade a sign which is: identical to a registered trade mark in relation to goods or services which are identical to those for which is it registered; or identical or similar to a registered trade mark in relation to goods or services which are identical or similar to those for which it is registered where there exists a likelihood of confusion (which includes association) on the part of the public; or identical or similar to a trade mark which has a reputation in the UK where the use of the sign being without due cause takes unfair advantage of or is detrimental to the distinctive character or the repute of the trade mark. (4) The best defence There are lots of arguments and tactics you can use to defend yourself against a claim of trade mark infringement. If the trade mark has become generic (e.g. linoleum aspirin gramophone) or if the trade mark is over 5 years old and the owner of the registration hasn't actually used the trade mark in the 5 years preceding the claim you can seek to have the registration revoked. If the trade mark should never have been registered for example because it conflicts with an earlier trade mark or did not meet one of the other basic criteria for registration you can seek to have the registration declared invalid. The difference between revocation and invalidity is that the former affects the validity of the mark from the date that revocation is ordered whereas the latter invalidate the mark ab initio in effect re-writing the mark's legal history. (5) The threats trap If you threaten someone with proceedings for infringing a registered trade mark then you risk being on the wrong end of a legal action for "groundless threats" under the Trade Marks Act 1994. Certain kinds of threat can be made without creating this risk - namely where the threatened proceedings relate only to acts of applying the trade mark to goods importing the goods bearing the trade mark and/or supplying services under the trade mark. You can also notify others that a trade mark application has been made or a mark registered without creating this risk. This "threats" action is peculiar to UK trade mark law. Because of this unusual law you should always seek professional advice before accusing someone of infringing your trade marks. (6) Uses and abuses of (r) and (tm) It is a criminal offence (punishable by a fine) falsely to represent that a trade mark is registered or to make a false representation as to the goods or services for which the trade mark is registered. The use of the (r) symbol amounts to a representation that a mark is registered; however the use of the (tm) symbol probably does not. (7) Applying for a trade mark You can instruct a trade mark attorney or solicitor to prepare and file your trade mark application or if you prefer you may do it yourself. Again if the brand which will be protected by the mark represents a substantial investment it is usually worth instructing a professional. Full details of the application procedure are posted on the website of the UK Intellecutal Property Office (www.ipo.gov.uk) and for CTMs on the website of the Office for Harmonization in the Internal Market (www.oami.eu). (8) Generic trade marks Can you register a trade mark which is generic? The answer to this question is not simple. The Trade Marks Directive does not use the word "generic". Instead there are three categories of mark which are not registerable on broadly "generic" grounds. First trade marks which are "devoid of any distinctive character" are not registerable. Second trade marks which "consist exclusively of signs or indications which may serve in trade to designate the kind quality quantity intended purpose value geographical origin the time of production of the goods or rendering of services or other characteristics of the goods or services" are not registerable. Third trade marks which "consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade" are not registerable. However if a trade mark has acquired a distinctive character as a result of its actual use then these bars to registration can be ignored. BRITISH GAS is a good example of a trade mark which has acquired a distinctive meaning. (9) Domain name game The system of domain name dispute resolution embodied in ICANN's Uniform Dispute Resolution Policy and its offspring is linked to the trade mark system. Trade mark rights can be used to secure domain names before they go on public sale (via "sunrise" periods) and to relieve domain name registrants of their domains names. The linkage is problematic not least because there is a mismatch between the scope of trade mark rights and the uses of domain names. Trade marks are national rights whereas domain names (even country code domain names) are inherently international; moreover trade mark rights are specific to certain goods and/or services whereas domain names are not. (10) Trade mark crimes The offence of falsely representing that a trade mark is registered (see above) is not the only trade mark-related crime on the statute book. However because of the way in which the trade mark crime provisions have been drafted (in particular a reference to "material" being involved) it is arguable you cannot commit a crime under English law by including a trade mark on a website. On the other hand it clearly could be a crime to sell counterfeit goods bearing others' trade marks via your site. December 2006 *The centrepiece of UK trade mark law is the Trade Marks Act 1994. However the 1994 Act was introduced to give effect to an EU directive - the "First Council Directive of 21 December 1988 to approximate the laws of the Member States relating to trade marks" (89/104/EC). English judges have generally preferred the wording of the Trade Marks Directive where it differs from the wording of the 1994 Act. For this reason relevant quotations in this article are taken from the Directive rather than the Act.

The Chartered Institute of Patent Agents - CIPA is a professional body for patent agents, incorporating all aspects of intellectual property law from trade marks, copyrights, inventions and technology. CIPA - The Chartered Institute of Patent Agents.

The Madrid system of international registration of marks is applicable among the countries party to the Madrid Agreement or the Madrid Protocol

The registration of trade marks in the UK is achieved through the UK Intellectual Property Office. If registration is accepted by the UKIPO a number of exclusive rights are bestowed upon the trade mark owner. These rights allow the owner to prevent unauthorised use of the mark on products that are identical or similar to the registered mark.

US Trademark Law: Rules of Practice & Federal Statutes (10AUG2007) Trademark Law on GSA FedLaw site Trademark Law Treaty Implementation Act Trademark Law Treaty (International) Fastener Quality Act insignia OG Notices (Official Gazette) Rulemaking/Federal Register Notices: Changes in the Requirement for a Description of the Mark in Trademark Applications (14Mar2008) [PDF] Changes in Rules Regarding Filing Trademark Correspondence by Express Mail or Under a Certificate of Mailing or Transmission (29Feb2008) [PDF] Changes in the Requirement for a Description of the Mark in Trademark Applications Notice of proposed rulemaking (25Oct2007) [PDF] Correspondence With the Madrid Processing Unit of the United States Patent and Trademark Office (16Apr2007) [PDF] Changes in the Requirements for Filing Requests for Reconsideration of Final Office Actions in Trademark Cases (14Feb2007) [PDF] >> More trademark-related rulemaking/notices

Step1Trademark Comprehensive Study Based in trademark searches our attourneys will evaluate the factibility of your Trademark Registration in United Kingdom. Then our Study will inform you about your chances of Registration. This service is optional but highly recommended. Step2 Trademark Registration Request Our British Attorneys will present and process your British Trademark registration before the British Trademark Office and they will monitor the registration process and inform you in case there is any issue from British Trademark Office. Step3 Trademark Registration Certificate Once your trademark be accepted you can obtain your Certificate of British Trademark Registration. . If by any reason your trademark is rejected this service does not need to be paid.