A is for…
Acquiescence means a failure to act against third party infringements or unauthorised activities. This can lead to loss of your rights.
If a trade mark is refused registration on the basis of non-distinctiveness, descriptiveness or that it is generic, it may be possible to overcome the objection if the owner can demonstrate the mark has acquired distinctiveness due to earlier use. Essentially, the owner must show that the mark applied for has been used for a period of time in which it has acquired a reputation and consumers would consider the mark to belong to the owner and not third parties.
An application is the official request for a trade mark or design registration at the relevant Registry.
An Assignment is a legal document evidencing the transfer of ownership of intellectual property from the registered owner to new owner. This must then be recorded at the relevant Registry.
B is for…
When applying to register a mark or design there must be an intention to use the mark or design otherwise the mark has arguably been filed in bad faith. If a trade mark or design is filed with the sole intention to prevent a third party from using an identical or similar mark or to deceive consumers, this may also be bad faith. Note that an intention to use is not always required, for example the EUTM system does not require intention to use on filing.
Brexit is the withdrawal of the United Kingdom from the European Union. The UK is due to leave the European Union at the end of the transitional period, currently 31 December 2020. Once the UK leaves the EU, it will also leave the EUTM and RCD systems. Please note that it will be business as usual at Kemp Little.
C is for…
A certification mark indicates that the goods and services covered are certified by the owner of the mark in respect of origin, material, mode of manufacture of goods or performance of services, quality, accuracy or other characteristics.
A collective mark distinguishes the goods or services of members of the association which is the owner of the mark from those of others.
In order to register a trade mark, you are required to specify the goods and services of interest. This is known as classification. Please also see Nice Classification below.
A clearance search will identify the risks of someone else having an earlier right to your proposed mark or design that could cause problems during use or registration. Clearance searches can look at the relevant Registers only and/or unregistered rights (provided these are searchable online).
A Co-existence Agreement is an agreement between two or more parties not to challenge the others trade mark or design applications/registrations provided that specific terms are met. This can prevent unnecessary legal proceedings.
A letter of consent is written permission by an owner of an earlier trade mark or design to use or register a similar or identical mark or design by a third party. Typically, a letter of consent is required to overcome an objection at the Registry during the examination stages.
Copyright is a right of ownership of works which are original and expressive. Copyright can be claimed in original literary, dramatic, musical and artistic work; non-literary work such as software, web content and databases; sound, music, film and television recordings; broadcasts and publishing layout of written, dramatic and musical works. Copyright is an automatic right, but it can be registered in a small number of territories, including the US and China.
An imitation of a product, which is intended to deceive consumers into believing that the fake product is of equal or greater value than the real product, is a counterfeit product.
D is for…
A trade mark will not be registrable if it is descriptive of the quality, feature, ingredients, purpose or characteristics of the products or services covered by the mark. However, it may be possible to overcome such an objection if the owner is able to show an established reputation in the mark, otherwise known as acquired distinctiveness.
A design protects the shape and visual appearance of an article that makes the product desirable and different. It is defined as the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation.
In order for a trade mark to be registrable, it must be distinctive. Generally, marks are more distinctive if they consist of made up words or unique characters. If a mark is considered non-distinctive, it may be possible to overcome such an objection if the owner is able to show an established reputation in the mark, otherwise known as acquired distinctiveness.
Dupe Killer is our proprietary AI technology able to recognise key features of a trade mark or design and identify copycats on the web, marketplaces or social media platforms.
A domain name is your website name.
E is for…
An earlier right is a trade mark or design which has an earlier application date, or earlier date of first use if unregistered, than that of others.
An European Union Trade Mark (EUTM) is a trade mark applied for or registered in the European Union at the European Union Intellectual Property Office. The EUTM covers all 28 member states (note that the UK is expected to leave the EUTM system at the end of the transition period due to Brexit) and has the same rights as a national application or registration.
The exhaustion of rights principle applies to a product which is sold under authorisation of the owner. Once an IP right is exhausted, it can be resold or subsequently commercially exploited without consent of the owner. See also parallel imports.
F is for…
The filing date is the date of application for registration of trade mark or design at the relevant Registry. This may also be known as the application date.
A number of territories are first to file territories. This means that the right to a trade mark or design is given to the first to file an application at the Registry, regardless of whether there are earlier unregistered rights.
Unlike first to file, a first to use territory recognises earlier unregistered rights.
G is for…
Goodwill provides value to company’s assets and can be claimed in trade marks where reputation has been established and the mark is known to the public.
Genericide refers to the process in which a brand loses its distinctiveness by becoming generic. Owners of trade marks must prevent their marks becoming generic by educating the public and ensuring their mark is used in the correct manner (ie as an adjective and not a noun).
Geographical Indication identifies goods from a specific geographical territory where indication of quality, reputation or other characteristics of the goods are linked to that territory. For example, Swiss chocolate is linked to Switzerland.
H is for…
A party has a right to be heard before any adverse decision is taken against them. This is known as a hearing.
I is for…
Infringement is a violation of your trade mark or design rights by a third party who is not authorised to use the trade mark or design, for example by offering identical or similar goods or services under an identical or confusingly similar mark without consent.
Intellectual Property refers to intangible property rights such as trade marks, designs, copyright and patents.
An intent to use is typically required in order to file a trade mark or design application. In some territories, the applicant is required to sign a declaration confirming its intention to use the mark or design. However, this requirement is not always needed – for example, the EUTM and RCD systems do not require an intent to use on filing.
An International Registration is a single application in which applicants can designate protection to a number of different territories. These territories must be a member of the Madrid Protocol.
An invalidation action is an action brought by a third party to cancel a trade mark or design registration based on earlier rights or grounds that the mark should not registered due to being descriptive or non-distinctive, for example. If a mark is successfully invalidated, it will be removed from the Register with retrospective effect.
J is for…
If more than one person or company own a trade mark or design, this is joint ownership.
K is for…
Kemp Little’s Trade Mark and Design Practice offers a superior service by world class IP specialists at competitive rates. If you’re not with us, why?
L is for…
The Locarno Classification is an internationally recognised system used to classify goods for the purposes of design registration. There are 32 different classes.
A logo refers to a figurative mark or particularly stylised word, rather than the plain words.
A licence is formal permission for a third party to use a trade mark or design belonging to another according to the terms set out in the licence. This can be recorded at the relevant Registry.
M is for...
The Madrid Protocol is the international system for obtaining trade mark protection in a number of territories (provided they have signed up to the Madrid Protocol) under a single application. This application is known as the International Registration.
Marking refers to the indication on a trade mark or design that it has been applied for (eg TM) or registered ®.
N is for…
The Nice Classification is an internationally recognised system used to classify goods and services for the purposes of trade mark registration. There are 45 different classes – 34 for goods and 11 for services.
Non-traditional marks are marks other than a word or a logo, such as sound, smell, taste, colour, motion, 3D, holograms and positional marks.
O is for…
An opposition is an official objection against your trade mark application by a third party.
P is for…
Parallel imports refer to branded goods which are imported and sold without consent from the brand owner. See also exhaustion of rights.
Passing off is where a party intentionally, or unintentionally, offers its goods or services in a way which misrepresents itself as that of another party which has goodwill in an unregistered mark and which may cause damage to the other party.
A Power of Attorney is a legal document which allows a person to act on behalf of another.
Once a trade mark or design has been filed for the first time, it triggers a six-month priority period. This allows you to backdate the later filed foreign application to the earlier filing date of the original application. In order to claim priority, the mark/design, goods and services/classification and owner must be the same as the original application. If corresponding foreign applications are filed after the six-month priority period, they will be given their own filing date.
Applications may be published in a trade mark journal to give third parties a period of time in which to oppose the application if they think they have an earlier right to use or register the mark or design.
Q is for…
A licence may contain a quality assurance term which requires the maintenance of a certain level of quality in a service or product.
R is for…
A Registered Community Design (RCD) is a design registered in the European Union at the European Union Intellectual Property Office. The RCD covers all 28 member states (note that the UK is expected to leave the RCD system at the end of the transition period due to Brexit) and has the same rights as a national application or registration.
Once a trade mark or design registers, this is put on a public register for third parties to access. This date is the registration date. A registered trade mark or design allows its owner to prevent third parties from using an identical or confusingly similar mark in relation to goods or services where it is likely that such use will confuse the relevant public.
Trade marks and designs are registered for a specific period of time after which they must be renewed in order to be maintained. In the UK and EU, trade marks are due for renewal every 10 years, valid indefinitely provided the renewal fee is paid. UK and EU designs are due for renewal every 5 years, valid for up to 25 years.
If a trade mark or design is not renewed by its due date, it may be restored if renewal is requested within 1 year, the official fee is paid and reasons for non-renewal are provided.
Revocation is an action brought by a third party on the basis of (1) non-use and no genuine reason for such non-use, (2) a likelihood of confusion with an earlier right and/or (3) the mark being non-distinctive, descriptive or generic due to the actions, or inactivity, of the proprietor. It is possible to revoke all or some of the goods/services. If a mark is successfully revoked, it will be removed from the Register from the date of application of revocation.
S is for…
Under the EUTM system, you can claim the earlier rights of existing national registrations in the EU and allow the national right to lapse in time but maintain those earlier rights under the EUTM. This is known as a seniority claim.
In the UK it is possible to file a series application, in which more than one mark (up to 6) is included in a single application, providing the marks are substantially the same with only minor variations.
T is for…
Trade marks are protected on a territorial basis. This means you need to obtain protection in each country of interest to you.
A trade mark is the way that a business or individual stands out from the competition. It needs to be able to identify the business or individual as the only source of a product, service or solution under that mark.
U is for…
Uniform Domain-Name Dispute Resolution Policy (UDRP) is an alternative dispute resolution system for domain name disputes.
An unregistered design may have some protection depending on the territory in which it originates. In the UK, a design right automatically protects your design for 10 years after it was first sold or 15 years after which it was created – whichever is earliest. It will only apply to the shape and configuration of a product, not 2D designs (graphics, textiles etc). In the EU, all designs may be automatically protected as an unregistered community design, valid for 3 years from the date on which the design was first made publicly available in the EU.
An unregistered trade mark is essentially a mark which is in use, but for which an application has not been filed, and has acquired rights due to that use. A number of territories, including the UK and EU, recognise the concept of unregistered trade marks. However, there are some territories which do not recognise unregistered rights or in which a later registered trade mark will trump an earlier registered right.
A trade mark or design must be put to use in the territory in which it is registered after a certain period of time (usually 3 or 5 years), otherwise it may become vulnerable to cancellation on the basis of non-use.
V is for…
The Vienna Classification is the system which classifies the figurative element of a mark into specific categories, divisions and sections based on shape.
W is for…
A watching service looks for recently filed or published marks which are identical or similar to the mark(s) watched. If a relevant mark is identified, you will be notified and can take appropriate action.
A well-known mark enjoys broader protection than ordinary trade mark as it also claims significant reputation. In order to have a well-known status, evidence of use and reputation will be required.
A word mark is a mark made up of plain words.
X is for…
Kemp Little’s Trade Mark and Design Practice is made up of (e)xperienced (e)xperts who (e)xcel and (e)ceed (e)xpectations.
Y is for…
Your brand is a “persona” of your product or service that you have created and established.
Z is for…
A zombie trade mark is the reviving of a trade mark which was once on the Register but has been allowed to lapse as the owner is no longer interested in, or trading under, the mark.