The basics of trademark law

Hi, my name is Charlie Bond, and I am an associate in the intellectual property team at Gowling WLG. In this podcast I will be going through the basics of trademarks, with a focus on UK law and procedure. I will be covering:

• What a trademark is;
• How you get one;
• What can and cannot be registered as a trademark;
• What makes a good trademark, together with some examples;
• How a trademark can be infringed and what remedies can be claimed against an infringer; and
• The practical steps a business can take to protect its brand.

So the first question I'll cover is:

What is a trademark?

The UK trademark regime is predominantly governed by the Trade Marks Act 1994, and is largely harmonised the EU trademark law. Section 1 of this Act defines a trade mark as:

"any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings."

To break this definition down, a trademark must be:

1. A sign - This generally has a broad meaning, and includes:

• Words (including personal names)
• Designs
• Letters
• Numerals
• The shape and packaging of goods
• Symbols
• Colour shades
• Or a combination of any of these

As an example, an attempt was made to register the Scrabble tile as a trademark, but it was deemed to not be 'a sign' because the application was for a single tile that could have any letter and number on it. The application therefore lacked precision and was refused.

2. Capable of being graphically represented - this is essentially a practical requirement. If something cannot be graphically represented then it cannot be shown on the trademark register and third parties cannot know if they are at risk of infringing the mark. By way of examples of applications that have fallen foul of this requirement:

• An attempt was made to register the distinctive noise that Tarzan makes in films. The application was refused because it was an attempt to register the noise in spectrogram form (being a visual representation of sound). This was deemed unclear and not easily accessible. However, it is possible to send an MP3 file with a trademark application, so registering a sound remains a possibility if done in the right form.
• IKEA attempted to register its distinctive blue and yellow colour scheme, but the application was refused because it failed to specify in sufficient detail how the colours would be arranged.

3. Capable of distinguishing goods or services of one undertaking from those of other undertakings - the fundamental function of a trademark is denoting the origin of goods or services. Therefore, if a trademark cannot distinguish the goods or services of one entity from another then it is not performing its fundamental function, and will not be registrable as a trademark.

So how do you get a trademark?

There are three options when it comes to applying to register a trademark:

1. Firstly, you can register a trademark by applying to the United Kingdom Intellectual Property Office (abbreviated to the UKIPO).
   
   Any natural or legal person can make the application, even if they are not based in the UK, provided they have a UK address for service.
   
   The application itself consists of a quite basic form in which the key information is the representation of the trademark being applied for and the goods and services for which registration is sought.
   
   Once the application has been filed, the UKIPO will perform an examination to check that it complies with its formal requirements and that it does not fall foul of the absolute grounds to refuse applications, which I will discuss later in this podcast. The UKIPO will also search for earlier registered trademarks that conflict with the application, which the applicant will then have an opportunity to argue against.
   
   Assuming the application gets through the examination phase, it will then be published online by the UK Trade Marks Journal. Third parties then have two months to object to the application. Any third party can object based on the absolute grounds, but only third parties owning earlier rights can oppose based on the relative grounds, both of which will be discussed later in this podcast.
   
   If the application is successful, the trademark registration will last for an initial period of 10 years, following which it can be renewed for additional periods of 10 years indefinitely. However, if a trade mark is not put to use in the first five years of its registration or for a continuous period of five years during its registration, then a third party may seek to have the registration revoked for non-use.
2. The second option is to file an application with the EU Intellectual Property Office (abbreviated to the EUIPO). The main benefit of applying for an EU trademark is it covers all EU member states (including the UK), so you save the money and time of having to make individual applications in multiple national intellectual property offices.
   
   The process for applying to register an EU trademark is very similar to that for a UK trademark. However, there are some specific points of difference to note:
   • Anyone can apply for an EU trademark, but if the applicant has no connection to the EU then they must appoint a qualified representative to act for them, which generally means instructing a qualified trade mark lawyer.
   • Both absolute and relative grounds for refusing the application are relevant, but the latter only comes into play if raised by a third party as part of an opposition.
   • The application must be in two languages. The first can be any language of the EU (of which there are 23), but the second must be different from the first and be one of those of the EUIPO (being Spanish, German, English, Italian and French).
   • The EUIPO may perform two types of searches during the examination phase of the application. The first is of the EU trademark database and the second is of the individual national intellectual property office databases. The latter search is only performed at the request of the applicant who must pay an additional fee.
   • The application will be published in the EUTM Bulletin.
   • An EU trademark application that is withdrawn, refused or abandoned, or the registration lapses, is surrendered, revoked or declared invalid may be converted into national applications in one or more EU member states, subject to some limited exceptions.
3. Lastly, an application can be made using the Madrid Protocol. This allows a home trademark registration or application to form the basis of an application for a so-called international registration. This application is filed with the International Bureau of the World Intellectual Property Office (or WIPO). This application will specify the countries in which it is seeking registration. The application will then be published in the WIPO Gazette of International Marks.
   
   Details of the trademark are then forwarded to each relevant national intellectual property office who will follow their own national procedure, at the conclusion of which they will either register or refuse the application in accordance with the applicable laws of that country.
   
   The main advantages of this system are similar to that of the EU trademark system, being that there is a single application filed in one office with one fee resulting in one registration with one number and a single renewal date. In addition, the geographical scope of protection is broader than the EU trade mark system, with 97 countries currently signed up to this protocol.

In terms of when you should apply to register a trademark, ideally this should be at an early stage in the development of a business so that the brand is protected from the outset. The application process also means if the brand overlaps with a competitor this will likely come to light and you can make a decision on whether a rebrand is necessary before too much time and money has been spent building the brand.

What can and cannot be registered as a trademark

To register a trademark it must not fall into either the absolute or relative grounds for refusing a trade mark application.

The absolute grounds for refusal are:

• That the trademark does not fall within the definition of a trademark. This was discussed earlier so I won't go over this again here.
• The trademark is devoid of any distinctive character.
• The trademark is purely descriptive of the goods or services for which it is being registered.
• The trademark is a term that is generic and commonly used in the relevant trade.

The latter three grounds for refusal can all be overcome if the applicant proves that the trademark has acquired distinctiveness, which in essence means proving the public associates the mark with you, despite it being generic, descriptive or devoid of distinctive character. For example, the slogan 'compare the market' was devoid of distinctive character, but it was proven that it had acquired distinctiveness and therefore was a valid trademark.

Examples of trademarks that have encountered these restrictions are:

• COMPANYLINE, which was deemed devoid of distinctive character.
• The registration of DOUBLEMINT in relation to chewing gum was refused because at least one of its meanings was purely descriptive.
• The application to register BABY DRY was saved from these grounds for refusal because it was deemed to have an unusual syntax.

There are additional less common absolute grounds for refusal including using a trademark that is misleading or offensive. There are also specific restrictions on shape track marks that are designed to avoid the de facto extension of the life of, for example, a patent by allowing the same product to be protected as a trademark. For example, where the shape of a product gives it substantial value, it will not be protected as a trademark because design law is more appropriate. I will not be going into detail on these exceptions because they are significantly less common than those already discussed, and are also sufficiently complex that they could form the subject of their own podcast.

The relative grounds for refusal, which as mentioned earlier can only be raised by parties with existing rights, are:

• Where there is an identical earlier registered trademark and the registration is for identical goods and/or services.
• Where there is an identical or similar earlier registered trademark, and the registration is for either identical or similar goods or services. In this situation, there must also be a likelihood of confusion on the part of the public, which includes the likelihood of association of the two trade marks.
• A mark that takes unfair advantage of or is detrimental to the reputation or distinctive character of an earlier mark that is identical or similar. In essence, this is where a trademark is piggy backing on the reputation of another brand. For example, Asda was not allowed to use the trademark SPEC SAVINGS AT ASDA because it was deemed to be taking unfair advantage of the Specsavers brand and reputation.

The two relevant marks will be compared to see if the overall impression they have on the average consumer differs. In particular, account will be taken of the aural, visual and conceptual similarities of the trademarks. They will be deemed identical if they differ only in insignificant ways that the average consumer wouldn't notice. For example, the insertion of a hyphen to the trademark WEBSPHERE did not prevent the two marks being identical.

When comparing the goods and/or services for which the marks are used and deciding whether they are identical or similar, the relevant consumers will be compared as well as the actual use of the marks and the relevant trade channels, as well as many other factors.

It is therefore quite a rigorous process assessing whether a trademark application falls within the relative grounds for refusal.

What makes a good trademark?

There are no hard and fast rules on this, hence there being such a large amount of case law where the registrability and validity of trademarks has been examined. However, there are some basic rules to follow.

• A trademark that is at risk of falling foul of either the absolute or relative grounds for refusal is generally not a good trademark. This may seem an obvious thing to say, but it is nonetheless an important point. Although there are many grey areas in the grounds for refusal of a trade mark application, if an application is made to register something that falls in these grey areas there is a risk that it will be refused and time and money will have been wasted.
• Something that is striking and memorable is generally a strong trademark. The best example of this is a word that is completely made up like KODAK. Alternatively, the mark could be something arbitrary that does not particularly relate to the product to which it will be applied (for example, APPLE or BLACKBERRY).
• Something that a consumer will link with the product to which it relates is also a good option. This may mean having a trademark that is partially descriptive so it reminds the consumer what the product does. But caution must be taken because if the dominant element of a trade mark is the descriptive portion then there is a risk it will not be registrable.

In terms of examples of good trademarks:

• AIRBLADE - is an example of a Dyson trademark that is very striking and memorable, and is relevant to the nature of the product for which it is being used (being the Dyson hand dryers).
• WEETABIX - is an excellent trademark because it uses a word that has been made up and is memorable, but it also references an aspect of the related product (being the wheat element of the breakfast cereal).
• AIRFIX - is a trademark that combines descriptive terms to make a new word, and which people commonly associate with model kits.

How a trademark can be infringed and what remedies can be claimed against an infringer

The situations in which trademark infringement occurs mirror the relative grounds for refusing trademark applications. To summarise, trademark infringement occurs when a sign is used by a third party in the course of trade in relation to goods or services where:

• The sign used by the infringer is identical to the registered trademark and is used in relation to identical goods and/or services to those that are the subject of the trademark registration; or
• The sign used is identical or similar to the registered trademark and is used in relation to goods or services which are identical or similar to those for which the trademark is registered; or lastly
• The sign used is identical to a registered trademark which has a reputation in the relevant territory and the use of the sign takes unfair advantage or is detrimental to the character or reputation of the mark.

Acts which constitute use of a sign in the course of trade include:

• Affixing the sign to goods or their packaging
• Offering goods or putting them on the market or stocking goods under the sign
• Importing or exporting goods under the sign
• Using the sign on business papers and advertising

A party accused of infringement has a variety of defences available to them. The primary option is to challenge the validity of the patent (so, for example, arguing that the trademark should not have been registered because it lacks distinctiveness), but there are other narrower options such as arguing that the infringing sign is the third party's own name and so cannot infringe.

As a slight side note, a third party has a general right to apply to revoke a registered trademark if:

• It has not been used for five years as discussed earlier. This can also be relied on where a registered trademark has only been used in relation to certain registered goods or services. In this situation, those goods or services not used would be removed from the registration.
• The mark's use has become generic, meaning the mark has become the common name in the trade for a product or service for which it is registered. For example, HOOVER and ESCALATOR are both marks that started as brands but became generic terms.
• The mark has been used in a misleading manner.
• The mark should not have been registered in the first place because it falls within the absolute or relative grounds for refusal discussed earlier.
• The mark was registered in bad faith.

Returning to trademark infringement, if a trademark owner is successful in proving its registered mark has been infringed then it is entitled to seek certain remedies which include damages in respect of its loss (or alternatively an account of the profit the infringer has made), an injunction preventing further infringing use, erasure, removal or obliteration of the offending sign from any goods, materials or articles on which it appears, or if this is not possible then the destruction of the relevant goods, materials or articles.

The practical steps any business can take to protect its brand using trademarks

The obvious first step to take is registering the trademark that you use or intend to use. If the business is not yet up and running, or this is part of a re-brand, it is worth doing clearance searches before filing an application. This will ensure there are no conflicts with existing brands. This is important for two reasons:

1. Firstly, pursuing an application for a trademark that conflicts with an existing brand may be doomed to fail at the application stage, which would waste both time and money.
2. Secondly, and more importantly, if the application is successful but you later end up being sued by a pre-existing brand owner you could end up pouring time and money into litigation, the end result of which may well be that you have to re-brand. The investment that has been made in the original mark will then have been completely wasted.
   
   If you already have a registered trademark, it is important to be vigilant and monitor the market to ensure no one starts using the same mark in a manner that negatively effects your business. This could be by simply manually searching for the registered trade mark using Google and see if competing results appear, or if the business operates around the world a brand owner could invest in a more sophisticated monitoring program that is operated by, for example, a law firm. If a competing brand enters the market and no action is taken to enforce the rights conferred by the registered trade mark, there is a risk the owner of the registered trade mark will be deemed to have acquiesced to the infringing activity and will therefore lose the right to take legal action.
   
   If you do not have a registered trademark but have been trading under a brand for some time then you may still be able to take legal action against someone using the same brand even it if it protected by a registered trademark. You would do this by using the law of passing off, which is beyond the scope of this podcast. However, best practice is to register any trademarks that are or could be used at an early stage because the rights conferred by a registered trade mark are much stronger than those that fall under the law of passing off.

To wrap up, this podcast has provided an overview of the core principles of trademarks and how they can be exploited. Trademark law is incredibly complex and is full of idiosyncrasies, so anyone that is seeking to register, exploit or enforce a brand should seriously consider seeking legal advice at an early stage.

Thank you for listening.