What is a trade mark?
A trade mark is a form of intellectual property right (IPR). In England and Wales, all trade marks are protected by the Trade Marks Act 1994 (the “Act”). The Act defines trade marks as “any sign capable of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject of the protection afforded to the proprietor, which is capable of distinguishing goods or services of one undertaking from those of other undertakings.”
This means that a trade mark could consist of:
- Words
- Designs
- Letters
- Colours
- Sounds
- Shapes of goods
- Packaging of goods
It is important to note that your trade mark could be protected even if it is not registered, through unregistered trade mark rights under the common law concept of passing off. However, these rights are very difficult to enforce.
Do I need to trade mark my business?
The short answer is no; there are no legal obligations for you to register a trade mark for your business. However, there are many benefits of registering your trade mark, which include:
- Add value – Registering your trade mark adds value to your business through your own intellectual property portfolio.
- Legal protection – Trade marks protect your brand name, logo, or slogan from being used by others without your permission. This reduces the risk of infringement and offers better protection than trading under an unregistered trade mark.
- Brand recognition – A trade mark can help consumers identify and distinguish your products or services from competitors. For example, the bitten Apple logo is so popular that you automatically associate it with Apple products like iPhones, MacBooks, etc.
- Exclusive rights – Trade marking your business name gives you the exclusive right to use the mark in connection with your goods or services, allowing you to prevent others from using similar marks. For example, if you have a registered trade mark with the UK Intellectual Property Office, you would be notified if someone files an identical or similar trade mark to yours. You are then given the opportunity to oppose the trade mark if you feel that it would cause confusion among the public.
Understanding trade mark infringement
Trade mark infringement is the unauthorised use of a similar or identical trade mark, which can cause confusion in the marketplace about the origins of the goods or services.
There have been many successful cases where companies were found to be infringing on someone else’s trade mark, even where it would seem unlikely. One such case is Asda v Specsavers. This case demonstrated the value of having a trade mark and a very recognisable brand.
Case summary of Asda v Specsavers
In October 2009, a conflict arose between Asda and Specsavers when Asda introduced a marketing campaign for their opticians brand. Specsavers claimed that this campaign violated several of its trade mark registrations because Asda’s logo was very similar to that of Specsavers (shown in the images below).
The original trade mark of Specsavers was filed back in 1986; however, the logo that is infringed was filed as early as 1997. This shows that the company has had a long-standing name and brand recognition in the public. The High Court initially ruled in favour of Asda, finding no infringement and even revoking Specsavers’s figurative registrations due to non-use. This case underscores the significance of trade mark protection and the legal intricacies surrounding such disputes.
Specsavers then proceeded to file an appeal at the Court of Appeal, where Lord Justice Kitchin ruled that Asda did in fact infringe on the Specsavers trade mark. LJ Kitchin further commented:
“It is reasonable to suppose that Asda had a good understanding of the nature of the market, the characteristics of the average consumer, and other matters affecting how the average consumer would react to the use of the proposed logos and, for my part, I adhere to the view that this is therefore very persuasive evidence of how the shaded logo mark is perceived.”
According to Lord Justice Kitchin, the rationale in this case is unlikely to be relevant in most situations involving the use of less distinctive logos that do not possess the strong reputation and uniqueness of the Specsavers brand. In fact, he explicitly mentions in his ruling that, typically, “the average consumer is unlikely to perceive the background of a mark as a sign of its origin.”
Conclusion
In conclusion, Asda v Specsavers demonstrates that having a recognisable brand and registered trade mark will offer you better legal protection from infringement than not having one. It further shows that sometimes businesses might intentionally use recognisable brands to poach customers.
We hope that this post helps you understand the benefits of having a registered trade mark for your business in the United Kingdom. If you have any questions, please contact us at trademarks@freemanharris.co.uk or call us on 0207 790 7311.
