Trade Marks Faq

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Common Trade Marks Questions


Trade Mark protection lasts indefinitely in the U.K., however a proprietor is required to renew the trade mark every 10 years. It is also important to note that a trade mark owner is required to use the mark in respect of the goods and/services for which the mark is registered to ensure that the mark is not open to revocation on the grounds of no-use. Furthermore, for other countries such as the US, it is important to present 'proof of use' during the application process.
The first thing to do is to request trade mark search for the jurisdiction in which you propose to your your mark. The search will flag up whether the proposed word, mark, or logo is already in use by someone else. At Mancunium IP, we have experience in conducting both patent and trade mark searches covering various jurisdictions at affordable rates. You can find more useful information about trade mark searches in the trade marks section of this website.
Passing off is a common law right that provides a remedy to a trader who does not own any registered trade marks but want to stop a third party from copying the "get up" / "goodwill" of one of their products or services. It is commonly defined as a misrepresentation by a trader in the course of trade to prospective customers which is calculated to injure goodwill or business of another, and which causes actual damage to such another.
Genericide is a process by which a trade mark loses the trademark function as an indicator of origin because the trademark is used widely and indiscriminately to refer to a type of product or service in the Industry. For example, escalator was originally a protected trademark used to designate the moving stairs manufactured by a specific company. Eventually, the word became synonymous with the very idea of moving stairs and thus lost its trademark protection. Other examples of trademarks that have become generic terms are thermos, trampoline, and cola. In order to ensure that your mark does not become generic, you should ensure that it is used as an adjective modifying a noun and not as a noun in itself. For example, instead of saying "Have you finished xeroxing that report", you could encourage users to say something like "Have you finished photocopying that report".
Some trade mark owners always carry a warning that indicates that a mark is a registered trade mark and prohibits use of the mark as a noun or verb. In addition to enforcing your rights each time you notice misuse, it may be useful to use the trade mark in association with nouns / the generic name for the product. So you could put "Xerox photocopiers" or "Google Search Engine", "Velcro touch fastener", e.t.c.
A name is a sign capable of indicating origin, so it is possible to register one's own name as a trade mark in respect of goods/ services. However it is important to note that if your name is confusingly similar/ or identical to a well known trade mark, it may be difficult in certain instances for you to register your name for the goods or services concerned, if the well known mark/ earlier trade mark is registered in respect of identical/ similar goods (and even if it is not registered it may in some instances not be possible to obtain trade mark protection).
The first thing to do it to contact your patent attorney as soon as possible. They will ascertain whether or not actual passing off or infringement may have taken place and will advice you appropriately on what options / course of action is available. Mancunium IP is able to assist clients in such a situation and offers advice on the options available to both IP owners and those accused of infringement. See our infringement section for more information.
Assuming that the business relationship no longer exist at the present moment, there are a number of issues here but the first question to ask is was there a contract governing their use of your trade marks?
When did the business partner begin to use the trade mark, was it before you registered the trade marks or after? The reason you have to ask these questions is to determine if he has common law rights in the trade marks? If you hold a registered trade mark, did you obtain this prior to your business relationship, or during your business relationship? Who came up with the trade mark? Is there anything that could cause him to reasonably claim that he was a co-owner of the mark before its registration?
If there is a contract, what does that stipulate about use of the trade mark once the relationship comes to an end. Even if you do not have a contract that addresses post-termination sales, you may still have legal recourse against your former distributor under certain circumstances, and their use of the mark may constitute trademark infringement if you can demonstrate that such sales are likely to cause confusion among the consuming public as to the origin of the goods. The problem you are likely to face here is that if the consumers of your products are deemed to be above average or more discerning (for example if the individuals who buy your goods are skilled professionals, architects, design engineers, etc) the threshhold for actual confusion has been interpreted as being quite high. But if it is established that the former distributor does not have any common law rights, then if your customers are unaware that the business relationship has ended, you may have a stronger case.
Infringement issues could also arise if your former distributor is selling goods of lesser quality using your trademarks in ways that would suggest they are affiliated with your company. Additionally, you may have recourse if their use of the trade marks is diluting your mark, if your mark has a reputation with the relevant public. Dilution can take two forms: tarnishment or blurring.
Tarnishment occurs if your former distributor is advertising your well known products as new, when in fact they are actually inferior to your new products. Blurring occurs in dissimilar products whereby the distributor is using your trade mark to on dissimilar products leading to the detriment of the prestige of your mark.

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