The New Way For Protecting A Trade Mark

The law affecting the registering of trade marks is about to change on 1st October 2007.

Trade marks and service marks, often referred to as brands, are valuable assets for companies and individuals. For many years, trade marks could be protected as registered trade marks, giving their owners a monopoly in the trade mark. The first trade mark ever filed and successfully registered in the United Kingdom is the well recognised Bass trade mark.

Successfully registration depends on the trade mark/service mark being distinctive. This means that it must be capable of distinguishing the goods and/or services from those of another and the trade mark must not be descriptive of the goods and services it covers. If the trade mark is not distinctive the Trade Mark Office may refuse its registration on “absolute grounds”. The problem with this process is the subjective nature of the trade mark examiners’ views.

Additionally, if an identical or confusingly similar trade mark exists when a trade mark application for a new trade mark is filed, it will be refused on the basis that the public are likely to be confused as to the origin of the goods and/or services (this is a “relative ground” for rejection). This often makes it very difficult to come up with a new mark capable of registration with so many earlier trade marks in existence.

So what are the changes?

The Government recognised the problems with trade marks being refused on
‘relative grounds’. Their new law means that from 1 October the UK Intellectual Property Office cannot refuse registrations on the basis of relative grounds. They can only reject an application on “absolute grounds”.

This means it will be up to trade mark owners to decide whether or not a new trade mark application is likely to be identical or confusingly similar to an existing trade mark. The relevant industry, effectively, will decide whether or not a particular trade mark should or should not be registered, assuming that it has satisfied the test of distinctiveness.

So what does that mean for trade mark owners?

Trade mark owners need to be far more diligent and proactive in protecting their brand from dilution, given that the UK Intellectual Property Office will no longer carry out this role only refusing trade marks on absolute grounds.

Trade mark owners are expected to start up trade mark watch schemes, so that new applications are monitored. The trade mark watch service will notify trade mark owners of any indentical and/or similar trade marks that are applied for, so that they will be able to oppose the application during the relevant 3 month publication period prior to registration of the mark. Opposing the mark at this stage will be far simpler than trying to challenge the trade mark after registration.

So is the new law a benefit or not?

The new procedure will undoubtedly simplify registration but it could cost trade mark owners to prevent dilution of the their trade marks. Whilst a trade mark search is not expensive to set up, opposing a trade mark can be expensive, particularly if defended. Accordingly, trade mark owners may wish to set aside a separate budget for bringing an action.

Conclusion

We have to wait and see if theses changes benefit trade mark owners,or whether they favour multi-national organisations rather than start-up businesses and small enterprises.

Published 20/09/2007.