As a first step, a business should identify its key and unique identifying features of its business’ ‘brand’ that it wants to capture as its trade mark(s).
Then, it can look at whether those key features could be protected by registered intellectual property rights.
The Trade Marks Act 1994 (the Act) provides guidelines in respect of what can and cannot be registered as a UK trade mark. The general requirement is that a mark must be distinctive.
Registered trade marks can take many forms, extending beyond a simple logo to protect:
- Names, for example ‘ALDI’ (owned by Aldi GmbH & Co. KG);
- Slogans, for example “Gives You Wings” (owned by Red Bull GmbH);
- Domain Names, for example ‘AMAZON.COM’ (owned by Amazon Europe Core S.à r.l.);
- Colours, for example a particular shade of robin’s egg blue for Tiffany’s; and
- Shapes, for example the shape of the classic glass Coca Cola bottle.
Where a trade mark lacks any distinctive character by the fact that it is descriptive of the goods and/or services; or where a mark is similar to other registered trade marks, the UK Intellectual Property Office (IPO) will generally refuse to register a mark.
Trade marks are registered in classes (numbered for ease of reference) and cover a wide range of goods and services, from textiles to tobacco, from transport services to temporary accommodation. The initial task for any applicant therefore is to consider for what goods and/or services the mark is likely to be used. There is little point in registering a trade mark in respect of a range of goods and/or services for which you have no intention of offering.
Recent case law has confirmed that registrants should be as specific as possible with regard to which services/goods the trade mark is registered against, to ensure a stronger, more robust mark.
Provided that the registration of the trade mark is renewed every 10 years, it can last indefinitely.
However, once registered, the holder of a trade mark is advised to conduct periodic reviews of their portfolio to ensure the protection afforded to the mark is still satisfactory, and that it is represented in the most appropriate classes of goods and services.