A Trade Mark is a sign that identifies a product or service….kind of.
Think Nike, and you think of the Nike Tick (or swoosh, if you prefer). A lot of people would call a company’s Trade Mark, their Logo. That’s partly right, and partly wrong. In fact, while a lot of times a company’s Logo is indeed a registered Trade Mark, it might not necessarily be so, or it might be one of a number of registered Trade Marks that company owns in respect of its brand and its intellectual property.
If that’s enough ‘law talk’ for you, then head over to the Logo Quiz app for your phone and see how many logos/trade marks you can identify there – It’s way more fun and way more difficult than you might think.
For those of you that avoided the urge to click the link, well done. Here’s some more law.
A Trade Mark is more than a logo. In fact, according to the legislation (I’ll take the European Directive, but our domestic national law is something similar);
'A trade mark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.'
Article 2, Directive 2008/95/EC of the European Parliament and of the Council
You have the choice to register a Word Mark, A Figurative mark, A Figurative Mark with Letters, a 3D Mark, A Colour Per Se Mark, or a Sound Mark. In practice, most applications are for Word, Figurative or Figurative with Letters.
So far so good. Now, here’s where things get a little bit tricky. You don’t just register your Trade Mark and that means you’re the only person who can use that word/mark anywhere in the world forever for any product or service. Sadly not. When deciding to register a Trade Mark, you have to pick what classes you want to register it in, and what classes you’re seeking protection in. This is generally done through the Nice Classification, which attempts to break all the goods and services (in the world, seriously) into 45 Classes. You must register your Mark in the class you are either currently using it in, or intend to use it in in the future. The more classes you apply for, the more money it costs, but the more protection you have…..notionally. If you apply for too many classes and don’t use the Trade Mark in that class, it could be open to the challenge on the grounds there has been no genuine use. So there’s a balance to be struck between making sure you protect your brand and identity now and into the future and (1) The cost of doing it (if you applied for all 45 classes for a Community Trade Mark it would cost you €7,200 in outlay alone) and (2) the likelihood or danger of someone challenging your Trade Mark Registration at a later date due to failure to make genuine use of it in a particular class
So, when should you be thinking about Trade Marks? Well, now. If you’re in business or are thinking about going into business with a product or service, you need to think about it right now.
All too frequently lawyers are approached by clients who have started a business, say, for example ‘Super Awesome Business’ and been tipping away for a year or two, and now things are starting to get serious. There’s some people interested in investing in the company, but, because they are big investor types, they know stuff about stuff, so they immediately check the Intellectual Property situation, cue to clients running around like headless chickens saying ‘can I patent and copyright it’ (no and no) and trying to rush through a registration only to discover that someone has already registered the Trade Mark ‘Super Awesome Business’, or ‘Super Dooper Awesome Business’ or ‘Awesome Business’….well you get the idea. Then the Patents Office is likely to reject your application in the first instance, and you’re left with an uphill (but not impossible) struggle to try and protect your brand and intellectual property.
There is a possibility some of your intellectual property and brand identity might be automatically covered under copyright law, and there’s also a thing called passing off, and then there’s design rights….What was the question again? Oh yeah, when should you be thinking about Trade Marks? Now.