Potential pitfalls when registering a trade mark

The potential pitfalls of applying to register a trade mark were highlighted in a recent case when Liverpool FC’s attempt to register the word ‘Liverpool’ as a trade mark was rejected by the Intellectual Property Office. The attempted registration reportedly sparked a backlash amongst residents of the city and the club’s fanbase – one of the club’s main fan groups described the decision as “a victory for common sense”.

Aside from the negative publicity generated by a high-profile case such as this, the attempt to register the city’s name provides a useful reminder of the legal criteria that must be satisfied in order for a trade mark to be successfully registered. We look at some of the key questions relating to trade mark applications below:

1. Who can apply for a trade mark?

Any ‘legal’ person can apply to register a trade mark. This includes individuals, companies limited-liability partnerships and any other entity which has the legal capacity to enter into contracts and own property.

2. Where should I apply?

The UK Intellectual Property Office (IPO) is the body which oversees UK trade marks. The EU Intellectual Property Office (EUIPO) governs EU-registered trade marks and the World Intellectual Property Organisation (WIPO) administers international trade mark applications.

3. When should I apply?

Trade mark registrations run on a “first come, first served” basis. This means that the best time to submit your application is often during the development stage of a new product or service. Getting your application in early provides a more solid footing on which to challenge any third party attempts to register the same or a similar mark. It also increases the chances of the trade mark being registered by the time the product or service enters the market.

4. What can be registered?

It is this question that is likely to be most problematic when trying to register a trade mark. There are many factors that the IPO (or EUIPO or WIPO) will consider when assessing a trade mark application. These include (but are not limited to):

• whether the applicant is currently using or has a genuine intention to use the mark. A mark which is not used for more than 5 years after registration is open to challenge from a third party.

• The trade mark must be clear and precise in the description of what is to be protected. An example of when this requirement was not satisfied occurred when an attempt to trade mark a scrabble tile on the basis of the following description was rejected: “a three-dimensional ivory-coloured tile on the top surface of which is shown a letter of the Roman alphabet and a number in the range of 1 to 10.” This was deemed not clear enough, in part because it attempted to cover a range of letters and numbers.

• The trade mark must be capable of being represented graphically – IKEA attempted to register its distinctive blue and yellow colour scheme, however the application was refused because it failed to specify in sufficient detail how the colours would be arranged.

• The trade mark must be distinctive and must distinguish the goods or services of one business from those of other businesses. General words or phrases, or those which are wholly descriptive or that are already in common use, are not likely to be accepted. Attempts to register the words ‘Elvis’ and ‘Tarzan’ failed because both words had passed into common usage on a wide variety of goods and memorabilia.

• If the mark is similar or identical to an earlier trade mark registered for similar goods or services, whether there is a likelihood of confusion with the earlier mark. The judgment as to whether the marks are likely to be confused is made from the point of view of the average consumer in the country or countries where the earlier mark is registered.

The above list is by no means exhaustive, and an oversight of any of these during the early stages of the filing process can lead to issues further down the line if your business has built up a positive reputation on the back of a defective trade mark registration.

If you would like any assistance with registering a trade mark or any other advice relating to intellectual property rights, please contact Tom Rook on 0114 252 7183 or tom.rook@keebles.com.

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