Trade Marks - An overview

A brand name or logo can be one of the most valuable marketing tools possessed by a company. The reputation associated with a brand sells the goods or services associated with the brand. It can also add significant value to such goods and services.

The value of the reputation associated with a brand name can be eroded if use of the brand name by third parties is not carefully controlled. A trade mark registration protects this reputation, enabling the proprietor to prevent use of the registered mark or confusingly similar mark by a third party.

Trade mark searching

Before beginning use of a mark one should check the mark can be used without infringing the registered rights of a third party. This can be done by means of a trade mark search at the Trade Marks Registry of the country concerned. The results of such a search may not be straightforward and advice should be sought on interpretation before beginning use.

The registration process

If a trade mark search indicates a mark is free for use one should consider registering it before use begins so preventing use and/or registration by third parties. One can also file a trade mark application after use of a mark has begun. Many countries have a first to file system and so filings should be made sooner rather than later to prevent registration by a third party.

Most, but not all, trade marks which distinguish the goods or services of one enterprise from another can be protected by registration. Registrable marks include words, phrases, pictures, designs, two and three dimensional shapes, colours or even sounds or smells.

A number of factors need to be taken into consideration before choosing a new mark and investing in its promotion. Advice from a trade mark attorney should be sought at an early stage of brand development.

The process of trade mark registration involves lodging details of mark and the associated goods and services at the relevant Trade Mark office and steering the application through any search and examination procedures which may be involved. If all goes well a mark can be registered in about a year, and even less in some countries.

Trade Mark registrations may be attacked and 'revoked' if they have been wrongly registered, for example because of conflict with earlier rights.

Trade Mark registrations can remain in force indefinitely provided the mark does not fall out of use and subject to the payment of renewal fees, typically every ten years.

Trade Mark registrations can be assigned or licensed between parties if required. A trade mark registration for a mark with a strong reputation can be a valuable business asset, particularly when seeking third party investment.