What is a trade mark?

A trade mark is a sign operating as a badge of origin by which customers can identify and distinguish your goods or services from those of other suppliers.

Are all trade marks registrable?

No.  There are official requirements which must be complied with.  Common problems are that a mark is not distinctive or is too descriptive of the goods and services it covers, or is already on the Register.

Should my trade mark describe what I do

Ideally, no.  Common words that should be available to others in your field to describe their own goods or services will generally not be registrable.  The best known and most successful trade marks are those which are completely meaningless, such as COCA COLA and KODAK, as these are capable of being completely distinctive of their owner's goods or services.

Are there any other restrictions?

Your mark should, as a general rule, include more than two letters and must not be the same as, or confusingly similar to, earlier trade marks or applications.  There are other, less common, restrictions and exclusions including those relating to protected emblems, royal insignia and flags.

Can I register catchphrases or slogans?

Yes, if they are suitably distinctive and may be represented graphically, along with smells, tunes and packaging shapes as long as they too are distinctive.

Will one registration give me worldwide protection?

No.  Trade mark rights are national and must therefore be protected in each country in which the mark is to be used.  There are, however, European Community Trade Marks and other International Registration schemes that can cover specially designated groups of countries.

Will a registration give me protection for everything I do?

Not necessarily - your registration will only cover the specific goods or services for which you have applied to register it.  In most countries goods and services fall into one of 45 internationally recognised classes.  The classes you wish to protect must be designated at the application stage.  Subject to third party rights, you may use your trade mark on anything you choose but you will only be able to claim registered protection for the goods and/or services actually named in your registration.  Generally, only in cases where substantial goodwill has been built up can the registration be used in dissimilar classes.

What protection will a trade mark registration give me?

A registration will give you the exclusive right to use your trade mark on or in connection with the goods and/or services for which it is registered.  It will enable you to prevent others from using an identical or confusingly similar mark on those same goods or services.  However, unless it is a famous mark, it will not allow you to prevent another from using or registering the mark for completely different goods or services.

How much will it cost me?

The cost of registering a trade mark is made up of official and administrative fees for filing and prosecution fees for seeing the application through to registration.  Costs vary greatly from country to country and will ultimately depend on the number of classes chosen, any objections raised by the Trade Mark Registry and any oppositions by third parties.  A full schedule of costs is available on request.

How long does protection last?

In the case of UK and European Community Trade Marks protection will last for 10 years, from the date of original filing of the application.  You can extend it indefinitely for further periods of 10 years on payment of a renewal fee.  Details of the duration of protection in other countries is available upon request.

How do I let people know my trade mark is registered?

Once your mark is registered you can use the internationally recognised ® symbol on it.  Prior to registration this symbol may not be used but the ™ symbol can be used instead to indicate that you treat the mark as a trade mark and will protect it as such.

Can somebody else register the same trade mark as me?

Possibly, provided it is for completely different goods and services and your mark is not famous.  The classification system allows identical trade marks to exist alongside each other thereby making more room on the Register. It is more likely to happen the less distinctive the trade mark you choose.  Unfortunately this may prevent later expansion of your registered protection as your business grows.

How do I know if the trade mark I want to use is available?

Searches of all national Trade Mark Registries can be carried out for a fee.  A search is always recommended prior to filing an application to find out if there are any identical or similar registered marks or applications that will prevent or hinder registration.  Sometimes searches of other sources are also advisable to see if there are any unregistered but longstanding rights that may compete with yours.

How do I exploit my trade mark?

The more exposure and recognition a trade mark has, the more valuable it will be.  The mark should be used, in its registered form and with the ® symbol, on any packaging, on marketing and promotional literature, in sales brochures, on invoices and on company vehicles.  Use may be expanded geographically or into new market sectors by licensing or franchising.  The more you use your mark the less likely it is to become vulnerable to attack.  Trade marks can be valuable assets which may dramatically increase the value of your business as a whole.  As such they should be used and protected.

How do I protect my trade mark?

Be assertive.  Be willing to bring an action for registered trade mark infringement.  Where an identical mark to yours is being used on identical goods or services you need only show existence of your registration to assert your rights.  If a similar mark is being applied to identical goods, or an identical mark is being used on similar goods, then you will need to show that there is a likelihood of confusion or association.  Police your marks by ensuring that licensees always comply with usage guidelines and report any misuse of your mark.  Subscribe to a watching service to find out what other parties are trying to register that might be similar to your own mark. If you develop a reputation for not tolerating infringement of your rights others will be less likely to risk infringing them.  However, beware of the legal provisions against making unjustified threats of infringement.

What about protecting my unregistered rights?

The remedies available for infringement of unregistered rights vary from territory to territory.  In the UK unregistered trade mark rights may be enforced by bringing a "passing off" action.  Such actions can be very expensive and require the injured party to demonstrate misrepresentation, confusion by consumers and damage.  Wherever possible, rights should therefore be registered to make them cheaper and easier to protect.

Will my trade mark attract copyright protection?

Copyright protection is generally not available for plain word marks but a specially designed logo or a catchphrase or slogan may attract such protection.  It is important to bear in mind though that if a logo has been designed by a third party such as a graphic design house, copyright in the design must be assigned to you to so you can enforce it.

What is a domain name?

A domain name identifies the address of a website on the Internet.  Since World Wide Web users often find sites by putting keywords into browsers or search engines, it is sensible for domain names to reflect trade marks or product/service names.  A domain name is exclusive in that it identifies a particular site, so no one else can own an identical one.  However, it does not give the owner any rights as such to the chosen name and does not enable you to prevent someone else from registering the same domain name with a different suffix (e.g. .com, .net, .co.uk etc).

What are top level and second level domains?

Top level domains (TLDs) include .uk and .us and any other country codes.  Generic top level domains (GTLDs) include .com and.org.  Second level domains include .co.uk and .org.uk.

Who registers the domain names?

Nominet is the national registry for all domain names ending in .uk (.co.uk, .org.uk, .ltd.uk, plc.uk).  The UK domain name system is the third largest in the world after .com and the german code .de.  The .com register is run by Network Solutions and overseen by Internet Corporation for Assigned Names and Numbers (ICANN).  Network Solutions no longer has a monopoly on the registration of generic TLDs (.com, .org and .net) and 52 other companies can now sell GTLDs via a shared registration system. 

How do I register domain names?

If you want to register a name with a UK suffix such as davenportlyons.co.uk contact Nominet at www.nominet.net.  To register a top level domain name such as davenportlyons.com, contact www.internic.net.  These sites will tell you if your name has already been taken, and if not the price it will cost to register.  Names are allocated on a first come, first served basis.  Initial registration with Nominet lasts two years.

Will a trade mark registration protect a domain name?

Trade mark registration enables you to take action against third parties for registering a domain name with that mark in it and using that domain name in the course of trade.  In particular, it will protect you if a cybersquatter registers in bad faith a domain name using your mark and tries to sell it to you for an inflated price. 

Can I register my domain name as a trade mark?

Yes.  Exclusive protection is not given to the non-distinctive element of the mark, (e.g. www or .com) but provided that the rest of it is not descriptive, trade mark protection may be possible for the domain name as a whole.

Can I stop others from registering domain names similar to mine?

Yes, but only if you have enforceable rights in the name.  If your domain name does not function as a trade mark for your goods, or is particularly descriptive of the site that it relates to, a third party may legitimately register a similar domain name, and operate a site from it which does not infringe your rights.

How can I prevent this?

By developing a comprehensive domain name (and possibly trade mark) registration strategy.

How do I choose which domain names to register?

Take into account your trade marks and any product/service names, any frequent or obvious mis-spellings of your trade name or marks and any that are similar enough that you would not want others to be using them.  Carry out an availability search and register a range of useful and defensive names and link them all to your site.  Do not worry that you cannot register all possible permutations of names provided that you have registered the most important ones.  Using descriptive meta-tags to ensure your site is picked up by the broadest search parameters can further strengthen your position.  Where other parties have already registered desirable domain names it may be possible to buy them and have them transferred to you or wait until they are de-registered for non-payment of renewal fees.

Do I automatically own all the material on my website?

No.  If your site has been designed by a website design house, copyright in the design and the look and feel of the site will originally belong to the designer unless specific provision is made and at best you will have a licence to use it.  Ensure you have a written assignment to you of all copyright before or on delivery.

Do I need a Copyright and Trade Mark Notice on my Website?

A copyright notice is not necessary to obtain copyright protection in all countries but is essential in others to enable copyright to be asserted.  Since work on the Internet is potentially capable of being viewed by everyone in the world, a notice should be included.

A trade mark notice is not required, however it does put the user on notice that you are using registered or unregistered trade marks on the web page.  If you have registered trade marks ensure that the ® is inserted next to the trade mark, ™ for unregistered marks.

© Davenport Lyons 2003.  All rights reserved

This document reflects the law and practice as at May 2003.  It is general in nature, and does not  purport in any way to be comprehensive  or a substitute for specialist legal advice in individual circumstances.