How is a trade mark protected?

A registered trade mark would usually be the organisation's name and logo or it might be the name of a product, service or campaign.  There are also unusual forms of trade mark, such as sound trade marks.  In order for a sign to be registrable as a trade mark, it must be distinctive and not descriptive, for example of the goods or services for which it is registered or of a geographical location.

A trade mark is registered with the Intellectual Property Office in the country or territory where you want it to be protected, which might be where the organisation operates or where goods are manufactured.  

It needs to be registered against specific classes of goods and services and it is essential that the description of goods and services included in a trade mark application is accurate because it cannot be added to at a later date.

A registered trade mark is capable of lasting indefinitely, provided that it is renewed every 10 years, although it can be cancelled for five years of non-use or if a successful application is made by someone who claims to have an earlier, conflicting trade mark.  It is therefore essential to ensure that there is freedom to register and use a trade mark before filing an application or adopting a new brand by carrying out clearance searches.

A trade mark should also be updated if the appearance of the mark changes over time or the goods and services for which it is protected are out of date.  

If you do not register a trade mark, you might be able to rely on the law of passing off in the UK to protect the mark.  In order to succeed in a claim for passing off, you will need to satisfy the following test:

• there is a reputation and goodwill attached to the mark;
• the public associate the mark only with the organisation and its goods and services;
• a third party has misrepresented to the public a connection with the organisation through use of a similar mark and that this has led to confusion of the public (or a likelihood of confusion); and
• this has caused damage to the organisation or the brand

Passing off is a much harder claim to prove than trade mark infringement due to the amount of evidence required of goodwill and reputation and of association of the mark with the organisation. Therefore, if you have a trade mark capable of trade mark registration, then it is worth registering to protect your organisation's name and reputation and save the costs of having to rely on passing off.