What is (and is not) a trade mark?

A trade mark can be a name, word, phrase, logo, symbol, design, image, sound, shape, signature or any combination of these elements. The vast majority of trade marks are words or images, or a combination of both.

You cannot register a trade mark if:

It lacks distinctive character

In order to register a trade mark it must have distinctive character so that it distinguishes your goods or services from those of your competitors. A trade mark lacks distinctive character if it is descriptive of the nature of goods or services that you supply. For example:

  • “Fruit and Veg”
  • “Pint of Beer”
  • “Professional Carpet Cleaners”
  • “Tasty Pastry”
  • “Cheap Cleaning”

Place names can also cause potential issues where they are used to give an indication of geographic origin. For example:

  • “Lincolnshire Sausages”
  • “Worcester Sauce”

Although it should be noted that distinctive character can be acquired through actual use and therefore permit registration. For example:

  • British Gas
  • Yorkshire Tea

There can also be issues where phrases or words have become customary in an industry or sector and therefore lack distinction in themselves:

  • “ … Direct” in the context of mail order retail
  • “.com” in e-commerce or online publishing
It is deceptive or misleading

A mark may also be rejected if it is deceptive or misleading. This is often linked to geographic origin so an application for “Somerset Nectar” may be rejected for an application for cider that is not brewed in Somerset (a region well known for the quality of its cider; or “SwissTek” for a brand of watches with no connection to Switzerland.

It is a protected names or emblem

Certain names and emblems are protected against registration as a matter of public policy and these include:

  • Armorial bearings
  • Flags and other State emblems
  • Official signs
  • Hallmarks
  • Abbreviations and names of international inter-governmental organisations
It is offensive or illegal

The examiner can reject an application on the grounds that a mark is offensive or promotes illegal activity.

There is something similar

If there is already a registered mark which is the same or similar to your proposed mark (whether audible, visual or conceptual in nature) the examiner may consider that the mark is not distinctive and refuse the application, and the other mark owner will have grounds to oppose the registration. For example:

  • Audible similarities: “Goo Gull Search Engine” or “Armour Zone Books”
  • Visual similarities would include circumstances where the wording on an existing mark is replaced with new wording in the same font and colours and using the same background or logo design
  • Conceptual similarities would include depictions of the same stylised animal for a clothing range where an earlier applicant had already registered both a figurative logo and also the animal’s name in word form.

What type of trade mark should I register?

A UK Trade Mark protects your rights in England, Wales, Scotland and Northern Ireland and is therefore most suited to businesses trading solely within the UK.

A European Union Trade Mark (formerly known as a Community Trade Mark) protects your rights in all 28 member countries of the European Union. The big advantage is that the cost of the application is considerably cheaper than to submit multiple applications across Europe. If you are trading, or intend to trade outside of the EU, then we recommend that you register a European Union Trade Mark as this includes protection within the UK.

In each case, the range of the protection can be extended to jurisdictions outside of the EU to countries who signed up to the 1989 Madrid Protocol. This includes countries such as the USA, Russian Federation, China and Australia and covers most major trading countries. An application for extension can be made either upon the initial application, or at any time following registration, although priority is only granted for the first six months of registration. Please contact us if you would like to discuss extending the scope of the jurisdiction.