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In the second of our posts on trademarks, this post examines the prima facie registrability of a trade mark under intellectual property law. This post will therefore look at:

  1. What allows a trade mark to be registered?
  2. When is a trade mark prima facie registrable?
  3. Practical considerations when registering a trade mark
  4. The benefits of registering a trade mark

What allows a trade mark to be registered?

As we saw in our previous post, a trade mark can be protected if it is unregistered but the protection available is limited. Registering a trade mark allows the owner of the trade mark to pursue an infringer for both the common law offence of passing off and the statutory offence of infringing a registered trade mark (as well as a host of other benefits as we will see below).

The Trade Marks Act 1994 (or “TMA 1994”) authorizes the registering of a trade mark in the United Kingdom.

When is a trade mark prima facie registrable under the Trade Mark Act 1994?

Any sign which can be represented graphically and which is capable of distinguishing the goods or services of one undertaking from those of another is prima facie registrable under s.1(1) of the Trade Mark Act 1994. There are two hurdles that a trade mark must therefore clear to be registered under the TMA 1994:

  1.  Is the trade mark distinctive?
  2. Is the trade mark capable of graphic representation?

Owners or representatives of the owner of the trade mark must then go on to consider whether the trade mark will be refused registration under the relative or absolute grounds (which we will consider in the next post).

Practical considerations when registering a trade mark

Those registering trademarks should consider:

  1. The best time to register a trade mark
  2. Does the trade mark possess elements which may make it difficult to register?

The best time to register a trade mark

The best time to register a trade mark is when the mark is in its developmental stages. This will allow the owner of the mark to fully benefit from the commercial advantages of the trade mark and to prevent infringement of the mark. It will also allow them to prevent the registration of any similar marks in the future. However, if you possess a trade mark which hasn’t yet been registered and want to protect the trade mark then make sure that you receive legal advice on registering it as soon as possible. Otherwise, you may be vulnerable.

Does the trade mark possess elements which may make it difficult to register?

Those registering the trade mark must consider:

  1. Does the trade mark fit the specifications of the good or service?
  2. Could the trade mark be considered to be inappropriate in any way?
  3. Would the trade mark be appropriate for use overseas? (for example, would it constitute inappropriate slang or connotation in another language?)

The benefits of registering a trade mark

The benefits of registering a trade mark are as follows:

  1. It is easier to protect your rights in the trade mark
  2. It allows you to commercially exploit the trade mark
  3. It allows the trade mark to become a more malleable and valuable commercial asset
  4. Your rights in the trade mark are of potentially infinite duration
  5. It avoids potentially expensive and time-consuming litigation over unregistered trade marks
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