Trade Marks

To speak to an expert about your trade marks, please contact us.

A trade mark is a sign that can be represented graphically and is capable of distinguishing the goods and services of the trade mark owner from those of another. A trade mark may consist of words, slogans, internet domain names, colours, the shape of goods or their packaging.

Registered Trade Marks

A trade mark registration conveys a monopoly right to exclude others from using the mark in respect of the particular class or classes of goods and services for which the mark is registered.

Trade marks are registered for a period of 10 years but are renewable in perpetuity.

A trade mark owner can apply to register a trade mark in the UK only or internationally. A community trade mark (CTM) is a trade mark that offers protection in all Member States of the European Union (and certain territories that have a special relationship with a Member State).

Unregistered Trade Marks and Passing Off

The owner of an unregistered trade mark can bring an action against an infringer for passing off a name or otherwise piggy-backing on acquired goodwill.

We can advise and assist you with registering and licensing trade marks. We can also bring or defend proceedings for trade mark infringement, or passing off.

The law of passing off is important when a business does not have a trade mark or the infringer is not using the mark as registered. It protects the goodwill in the business and stops one trader utilising the reputation of another.

The owner of an unregistered trade mark can bring an action against an infringer for passing off a name or otherwise piggy-backing on acquired goodwill.

In order to succeed in a claim for passing off it is necessary to prove:

  • it has established goodwill or a reputation in the mark,
  • a misrepresentation has been made by the infringer that leads or is likely to lead the public to believe that the goods or services offered by him are the goods / services of the trade mark owner, and
  • damage has been caused to goodwill or reputation as a consequence of the misrepresentation.

If the first two points are made out the Court will assume damage, but to recover money actual damage must be shown.

 
 

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