What is a trade mark?
Updated: Sep 29, 2020
Trade marks give you the exclusive right to use a particular "sign" in your business for particular goods and services. They can potentially last forever provided that you keep using the trade mark and keep paying fees to the relevant intellectual property office.
What is a sign?
A sign is anything which distinguishes one business from other business. Commonly this is a word or a logo but in Europe, it can be anything provided it can be recorded in some form of permanent media. For example, an audio file, colour, shape, video clips and holograms could all potentially be registered.
What goods and services?
A trade mark only gives you the exclusive use of a sign in business in relation to particular goods and services (i.e. products). This means that if you obtain a registered trade mark, you can stop another business from using your trade mark.
All conceivable goods and services have been categorised into 45 different classes (the Nice classification). In Europe, all trade marks are applied by reference to one or more of these classes.
The most important classes for fashion are:
Class 14 includes jewellery, clocks and watches
Class 18 includes luggage and carrying bags, umbrellas and parasols;
Class 25 clothing, footwear and headgear
Class 35 includes advertising and retail services
In Europe it is possible to apply for a single trade mark which covers multiple classes. For example you could apply to register ROSIE in class 14 for jewellery and watches, 18 for umbrellas, 25 for footwear and headgear and 35 for retail services.
An international trade mark?
Trade marks are territorial. This means that you have to file a trade mark in lots of different countries if you want comprehensive trade mark protection around the world.
There is a centralised filing system for trade marks around the world known as the Madrid system. They are sometimes referred to as "international trade marks" but this is a confusing misnomer.
In reality, once a trade mark is filed via the Madrid system, it is sent to each office that is selected in the filing process (or "designated" to use the official terminology) and they determine whether the trade mark has the necessary qualities for registration in their particular territory.
The more countries you file in, the more expensive it will be as you have to pay fees to lots of different intellectual property offices, legal fees to local lawyers and potentially additional fees such as translation, notarisation and similar. Plus, if the local intellectual property office or someone with an earlier similar trade mark objects to your trade mark you will incur additional legal fees trying to resolve the issue.
This means that you need to think carefully about key jurisdictions and plan your filing timetable based on costs management and timing for exclusivity.
To find out more contact Rosie Burbidge, Intellectual Property Partner at Gunnercooke LLP in London - email@example.com
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