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Trade Marks

Registered trade marks provide protection for a potentially unlimited period of time and allow the owner to stop others using an identical or confusingly similar mark for the same or similar goods or services by means of a legal action for trade mark infringement. 

A business may also possess what are known as ‘common law’ or unregistered rights in a trade mark which are built up through use in commerce and which may be enforceable by a legal action in passing-off.  However, a major disadvantage of relying upon these unregistered rights is that unlike a registered trade mark, where registration is prima facie proof of protection, the owner of an unregistered right must prove the existence of their right before a case for passing-off can succeed (a notoriously time-consuming and expensive exercise).  Moreover, use of a trade mark which has not been registered runs the risk of being prevented by a third party who obtains registration for the same trade mark.

Where your goods or services are not destined for markets outside the UK  your interests may be protected sufficiently by obtaining a UK Trade Mark Registration filed through the UK Intellectual Property Office.  However, where protection is required in a number of countries, registrations must be obtained covering each of those countries.

It is a common misconception that a “global” trade mark application may be filed.  In fact, there is no true global trade mark system.  However, it is possible to obtain protection in a significant number of jurisdictions by using one or more international conventions without the necessity for filing separate applications with the industrial property offices of each jurisdiction of interest.  For example, a registered trade mark covering the UK and all other EU member states may be obtained by filing a Community Trade Mark (or “CTM”) application. 

It is also possible for UK nationals and companies to use a UK or Community Trade Mark registration or application as a basis for establishing a so-called “International Registration” covering states which are members of the Madrid Protocol.  Whilst such an International Registration would not extend protection to all countries worldwide, the list of Madrid Protocol members does include major markets such the USA, Japan, China and Australia.  One of the major benefits of the International system is that filing and maintenance costs can be drastically reduced, when compared with separate national filings.

We can advise on availability and registrability, and assist you in filing and prosecuting trade mark applications at the various intellectual property offices throughout the world.  We also advise on assignment and licensing, and can assist with enforcement of rights (including infringement advice).

For further advice on trade marks please contact us: tmarks@maguires.co.uk

Tel:+44(0)1480 301588 | |

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Whilst every effort has been made to ensure that the information provided on the website is accurate and up-to-date, please contact us to obtain advice before taking any action based on this information.