The words “trade mark” and “brand” are often used interchangeably.
‘Brand’, in a marketing context, has its origins in the historical use of the word to refer to marking livestock with a hot iron. It was then, and it is now, a way of saying “this is mine”.
This concept of branding extended over time to extend to simple visual signs to represent provenance, for example, early potters would mark their pots with a thumb print or symbol: a simple way of communicating to others, including customers, the message “I made this”.
What is a trade mark?
A trademark is the modern way of immediately communicating to your customers that something is yours, that you made it, that it is associated with you.
What can function as a trade mark?
- Words
- Slogans
- Designs
- Letters
- Numerals
- Internet domain names
- The shape of goods or their packaging
- Smells
- Sounds
- Colours
- Gestures
- Moving digital images
Do I have to register my trademark?
However only trademarks which are registered can use the ® logo in association with their brand mark in the jurisdictions where they have applied for and received registration.
Should I register my trademark?
Registration of trade marks is voluntary but recommended.
A registered trade mark is:
- a valuable commercial asset
- commercially exploitable
- relatively easy to protect and enforce
- deterrent to would-be imitators
- Renewable indefinitely.
If you decide not to register your trademark and it is infringed, you still have legal avenues available to you to address this but they are much less direct than for registered marks. You will have to look to the common law for protection and must rely on a passing off action to prevent infringement of the mark. Passing off actions are notoriously time-consuming and expensive. You will have to produce evidence of your ownership of goodwill or reputation in the mark and that the unauthorised use of the mark amounts to a misrepresentation which is causing, or is likely to cause, damage. However protection of a new, unregistered brand name or mark may be impossible since it may not have attracted sufficient goodwill to support an action for passing off. Gathering evidence to demonstrate that there is a misrepresentation, usually in the form of evidence of confusion (or a likelihood of confusion) is labour-intensive and costly, particularly where it is necessary to involve market research companies and experts because survey evidence is the only means of showing that there is confusion.
Conversely, however where you have registered your trade mark the Trade Marks Act 1994 (as amended) clearly covers your rights and remedies in terms of registration and the protection of registered trademarks.
When should I apply for registration?
What does it cost to register a trade mark?
.
How can Nalders help?
- assess your material to ensure that it qualifies as a trade mark
- check that there are no similar or identical marks already registered in relation to the same or similar goods/services
- advise you on the relevant classifications for your goods and/ or services as you can only apply for protection in the classes of goods or services which you offer or intend to offer
- advise you on the applicable fees
- hold your hand through the examination process including dealing with any objections
- deliver your registration certificate
- Advise you on protection of your trademark once registered, for example, by the use of a Trade Mark Policy
- We look forward to working with you to further protect and promote your brand and the future of your business.
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