In 2011, Brand Finance estimated Google’s trade mark – the most valuable on the planet- to be worth a staggering $44 billion. It is not a stretch of the imagination to state that ownership of such a famous trade mark is a very valuable property right indeed.
A trade mark is your biggest aid in customer recognition. It is your reputation and your respectability. Think of the Nike “swoosh”, McDonalds’ Golden Arches, or Google’s coloured font. Simply put, it is anything that distinguishes one product or service from another.
Trade marks are part of you or your company’s Intellectual Property. Intellectual Property falls into roughly four areas: patents, designs, copyright and trade marks. A patent protects the inventive process of the product, how it has been made and how it works. A design protects the look and style of the product. Copyright protects the artistic and literary expressions others associated with the product and registered trade marks protect how the product or service is identified. A trade mark can be a logo, a slogan, a jingle or a brand name. It could even be a smell, package or colour combination; anything that makes your brand yours.
Trade marks have been around a very long time, reputedly started by Roman blacksmiths forging their swords. The very first UK trade mark, trade mark number 1, was registered in 1876: the Bass beer red triangle. So long as the trade mark continues to be used in commerce, and the correct fees are paid, a trade mark can last indefinitely.
Whilst the definitions of what a trade mark can be are quite open, not everything is up for grabs. Trade marks can only be registered for goods and services that will be exploited financially. You cannot, therefore, trade mark common surnames or geographical locations. Anything considered offensive or under royal patronage cannot be registered. Neither can you register as a trade mark anything that pertains too obviously to your product or service, so an emerging cotton trader will have little luck trying to trade mark ‘cotton’.
There are three classifications of trade marks, each signified by a different symbol.
® – This symbol indicates a registered trade mark.
TM – This is the ‘trade mark symbol’, designated to unregistered, less protected trade marks.
You do not, by law, need a registered trade mark in order to trade, but without one there is less legal protection from having a similar or copycat product or service using your recognisable symbols to attract your customer base for themselves. Other companies might simply use your brand name or logo directly, but often copied trade marks can be far more subtle. Consider, for example, the bygone National Biscuit Company (now Nabisco), whose product “Uneeda Biscuit” was later infringed by “Iwanta Biscuit”,“Uwanta Biscuit” and “Ineeda Biscuit”.
In the “Iwanta” case, the opinion of the court was partly as follows: “…it makes no difference that dealers in the article are not deceived. No one expects that they will be. It is the probable experience of the consumer that the court considers…The incessant use of the personal pronouns in daily speech has associated in every one’s mind the sounds represented by the letter ‘I’ and ‘U,’ the two words are of precisely the same length; both end with the letter ‘A,’ and both express the same idea, namely, that the prospective purchaser’s personal comfort would be promoted by the acquisition of a biscuit.”
The court’s position on trade mark infringement has changed very little since the National Biscuit Company case. The deciding factor is still whether a trade mark infringement could confuse or deceive a customer. Even phonetic similarities must be considered when searching for a suitable trade mark. Two gas mantle manufacturers, Yousea and U-C-A, came to court for trade mark infringement when it became apparent that Yousea is commonly pronounced ‘You See A’ and could therefore confuse the consumer. However, certain companies can still share the same name but sell completely different end products (Swan matches, Swan rental cars and Swan electricity, for instance). They are registered trade marks for specific products in unconnected categories called ‘classes’, of which 45 exist. You can view all 45 classes here.