Trademarks

Trademarks are a way of protecting goods by distinguishing them from similar products. A trademark can be as simple as a single word, a colour, name or phrase. Further examples include three dimensional images, logos and tunes. Trademarks are a common method of protecting unique features of an organisation upon which it has built its reputation.

A trademark may either be registered or unregistered. Each method provides the owner of the trademark with different levels of protection against infringement.

Unregistered Trademarks

Unregistered trademarks may be protected by the common law action known as a passing off. This prevents others from copying a trademark to brand or sell their own products. If you have an unregistered trademark which you feel has been infringed, in order to be successful in a passing off action you must be able to demonstrate that others will be misled by the unauthorised use of your trademark (i.e. customers will buy their products believing them to be yours), and that the trademark would only be associated with your particular product. The Borneos commercial litigation team has wide experience of dealing with such claims and obtaining injunctions to prevent continuing passing off.

Registered Trademarks

An additional method of protection, which is far easier and cheaper to enforce, is formal registration of important trademarks with the Patent Office. Once an application for registration is made, the Patents Office will make a specialised search to ensure that your proposed trademark is not already in use and that it does not already have a direct association with any other goods or services. The application procedure normally takes about two months. If your application is acceptable, the Patent Office will publish it and there is then a period of between three and six months to allow others to raise any queries or lodge any objection. Providing that your application is successful a registered trademark will offer you protection for ten years. Registered trademarks can then be renewed every ten years.

Registration of your trademark by the Patent Office only allows protection of your trademark within the UK. For protection of your trademark overseas separate registrations must be made within the relevant countries.

We are happy to help and advise you on both UK and overseas trade mark applications.

 

 

If you would like to discuss how we might help you, please:

 

• call any of our office numbers listed at the bottom of this page;
• contact one of our specialists direct by clicking on their name below; or
• complete our enquiry form

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Members of our team specialising in this area:

Andrew Kerr, Mark Thompson

Jordan Glackin, Ian Jenkinson