Understand different types of IP
A trade mark is a sign which can serve to distinguish your goods or services from those of others. They are sometimes described as "badges of origin", though they need not be words or images (please see (c) below).
Trade marks protect elements of your branding, and can be extremely valuable where you have built up a well-known and reputable brand. Some of the most valuable trade marks in the world such as Apple and Google are worth tens of billions of pounds.
Applying for trade marks at an early stage and enforcing them, whether through litigation or liaising with online marketplaces and customs authorities, can help you to secure your brand identity and prevent others from imitating your brand or manufacturing counterfeit versions of your products.
How are they obtained?
Applications to the UK Intellectual Property Office (UKIPO) for Trademarks
If you require trade mark protection only in the UK, and not other EU member states, then it would be more cost effective to apply to the UKIPO for a UK trade mark.
Applications to the EU Intellectual Property Office (EUIPO) for EU Trademarks
EU trade marks provide uniform protection across all 28 member states. If you require trade mark protection in several or all EU member states it will therefore often be more cost effective to apply to the EUIPO for an EUTM, rather than apply to individual national trade mark offices for national trade marks.
Applications to the World Intellectual Property Office (WIPO) under the Madrid System
The Madrid System is an international system which allows applicants to obtain trade mark protection in up to 117 countries using a single application.
To apply under the Madrid System, an applicant must have a trade mark application or registration in the country or region which they are applying from. For example any UK company or UK national may apply if they have a UK or EU trade mark which can serve as the basis for an International Registration under the Madrid System.
Applications are first filed at the Trade Mark Office of the applicant’s home country/region – this corresponds to the “home” application or registration upon which the International Application is based. A formalities examination is then carried out by WIPO. If there are no issues, an International Registration will be registered and details sent to the trade mark offices of each of the member countries/regions listed in the International Application. The designated member countries/regions then have a period of either 12 or 18 months from being informed of the designation by WIPO in which to either grant protection or notify refusal to WIPO. The 18 month period may be extended the registration is opposed by another party.
International Registrations are also renewed through the centralised WIPO system.
What do they protect?
Different elements of the branding of your business, e.g. brand names, logos, slogans, and jingles, and in certain circumstances, shape and colour.
The logo of a pharmaceuticals company such as GlaxoSmithKline
Brand names such as EpiPen® and BAND-AID®
The shape of a wearable heart rate monitor, if consumers rely on the shape as an indicator of its brand or origin
Passing off is an English common law action which can either be used as an alternative to or alongside registered trade marks to protect your brand.
Passing off actions are dependent on the "goodwill" of your business, so may not be a viable option in the early stages of a business. In contrast, trade marks do not necessarily depend on such goodwill and provide protection from the day they are registered. Passing off also requires proof of actual or potential damage, unlike trade marks where proof of such damage is unnecessary.
How is it obtained?
No procedure for obtaining per se – it is a common law action based on registered rights (such as registered trade marks) or unregistered rights (such as the shape of your product). However the three elements of goodwill, misrepresentation and damage must all be proven to succeed in a passing off action.
Passing off exists in England and Wales and other jurisdictions with legal systems based on English law such as England, Australia, New Zealand and Hong Kong. Goodwill must exist in the jurisdiction in which the passing off action is being brought, e.g. goodwill in Australia cannot be used to bring a passing off action in England.
What does it protect?
Goodwill (e.g. logos, names or associated 'get up'), in the event that there is a misrepresentation and actual or potential damage to that goodwill.
How long does it last for?