Legally speaking, a trade mark is any sign which can distinguish the goods and services of one trader from those of another. This definition is quite broad and a trade mark might not necessarily simply be a name or a logo, it may be a colour or a three-dimensional shapes. Sometimes trade marks are even sounds or even smells. A trade mark exclusively indicates where the relevant goods or services come from. Increasingly, artists and designers are registering their names as trade marks since that’s how their creative businesses become known and identified.

A trade mark owner will have the right to stop any competitor from using an identical or similar trade mark to their trade mark in relation to identical or similar goods or services such that consumers would likely be confused as to which was the original.

Trade marks, similarly to design rights, take two forms; unregistered trade marks which emerge over time as a particular trade mark is used over a number of years it acquires reputation and recognition which means it becomes an unregistered trade mark which the owner may rely on to stop others using identical or similar trade marks, and registered trade marks where a creator of a trade mark or someone who has already acquired unregistered rights may apply to the relevant Government agency (the Intellectual Property Office in the United Kingdom) to register their trade mark. The main difference is evidentiary. To rely on an unregistered trade mark the owner must prove they have established the rights, whereas a registered trade mark owner evidences his rights with the trade mark certificate.

In order to successfully register a trade mark, it is necessary to overcome two key legal hurdles. The first is that your trade mark must be distinctive. This means that it can’t be descriptive of your goods and services (so “GOOD ARTWORK” would not be registerable as a trade mark for artistic and graphic design services). The second is that you trade mark may not be similar to an existing registered or unregistered trade mark for similar or identical goods or services. If it is the owner of that earlier existing trade mark may oppose your application and it may be refused as a result.
 
The best trade marks, then, are very original and distinctive made up words or devices where distinctiveness is derived from the fact that the trade mark is in no way descriptive of the goods or services provided by the owner. The more original and unusual, also, the less likely of their being a coincidental conflict with an existing trade mark.

If you have any questions about trade marks, please feel free to call us.

BRIFFA creative lawyers for creative business
Contact: Silas Brown silas@briffa.com
Tel: 020 7288 6003
Fax: 020 7288 6004

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