Under UK law, there is no requirement that you register a trade mark before you can refer to it as one. Conversely, if you say your trade mark is registered when in fact it is not, you might find yourself facing prosecution.
The value of a trade mark
A trade mark acts as a guarantee of origin – it confirms to the buyer whose goods or services they are buying. In this way, a trade mark will distinguish a business’ goods and services from those of its competitors and can influence buyer behaviour.
After all, how many times have you stood in the supermarket and chosen a branded product over a supermarket own brand? In making that decision, did you objectively weigh-up the intrinsic qualities of the two competing products or did you make a choice based on the perceived attributes of a brand you recognise? Did you associate that brand with a particular level of quality?
Although a very basic example (and one that does not factor in other variables, such as cost), the supermarket vs branded product comparison does demonstrate the value that trade marks can add to a business.
Like any other business asset, a trade mark may be exploited (e.g. through licensing) and used to attract and secure investment.
Registered vs unregistered trade marks
Under UK law, there is no requirement that a business must register a trade mark before it can use it as one or say it is a trade mark.
Registration brings with it a host of benefits, including exclusivity of use of the mark for the goods and services included in the registration, for the jurisdiction where registration is obtained. If an unauthorised third party uses your trade mark, registration will likely put you in a better position to prevent that unauthorised use.
While there are claims available to prevent unauthorised use of an unregistered trade mark, these tend to be a more complicated to prove and, therefore, more expensive to pursue.
Use of the registered trade mark symbol
™ vs ®
In view of the benefits that flow from registration, it is not surprising that businesses see trade mark registration as a smart move.
Generally speaking, the registration process is quick and cost effective. Registration can be obtained in most countries, although a business should bear in mind that the rights acquired from registration will vary from jurisdiction to jurisdiction, as will the laws that determine whether a trade mark is registerable or not.
In the UK, businesses are able to use the ™ symbol to indicate their brand is a trade mark. This remains the case regardless of whether the trade mark has been registered.
The situation is different when we consider the ® symbol: if you use ® (or the word ‘registered’) where the mark in question is not registered and you know or have reason to believe that the mark is not registered, this is would constitute a criminal offence, punishable by fine.
In addition, if ® or ‘registered’ is used to misrepresent the goods and services of the registration – i.e. the registration is for lipstick but it is claimed the mark is registered for spin bikes – and you know or have reason to believe that this is the case, again, this would constitute a criminal offence.
A business will not necessarily escape prosecution if its trade mark is registered overseas and not in the UK; in that circumstance, prosecution will only be avoided if the business can demonstrate that the labelling relates to a foreign trade mark registration.
Given the implications of a prosecution (both reputational and financial), it is, therefore, imperative that businesses understand exactly what rights they have and how they can advertise their existence.
How can Nelsons help?
If you have any queries regarding the subjects discussed in this article, please contact Emma or another member of the team in Derby, Leicester or Nottingham on 0800 024 1976 or via our online enquiry form.