Patents are only one type of intellectual property. Another important type of intellectual property is a trade mark.
Trade marks are what make brands recognisable and distinguishable. They help to identify who is the owner of a particular product or service. Like all intellectual property, they can be very valuable assets to a business.
In this blog post, former IP Inclusive intern Susan Nelson looks in more detail at what trade marks are and highlights what a career working with trade marks could look like.
What are trade marks?
A trade mark is what makes a brand recognisable. It helps to identify who is the owner of a particular product or service. You can think of it almost like a badge of origin. A trade mark is often seen as a symbol of trust or as guaranteeing a certain quality since people associate it with a particular brand.
The McDonalds yellow arches are an example of a well-known trade mark. When most people see those yellow arches on a building, they will assume that building to be a McDonalds restaurant and they will know what to expect there. The Nike swoosh, the Apple logo and Cadbury’s iconic purple wrapper colour are other examples of trade marks.
A trade mark can be a word, a logo, a shape, a position, a colour or combination of colours, a pattern, a motion, a sound, a slogan (eg “Gives you wings”), a hologram or multimedia.
How to register a trade mark
In the UK, to register a trade mark you must apply to the UK Intellectual Property Office (UK IPO). This is a government body that manages trade mark registrations. Once an application is submitted, they will examine whether the trade mark satisfies certain conditions. If it does, then it will be registered.
Trade marks are registered in the context of particular goods and services. This means that when applying, you must specify which goods or services the mark will be used for (eg soft drinks, clothing, toys, cosmetics, publishing, financial advice or whatever).
A trade mark is a legal right. Once you have a registered trade mark, you have the exclusive right to use it in the category of goods/services it is registered for. You can then license the trade mark to someone else, which means they can use the mark if they comply with your conditions (and usually pay you a fee).
Trade mark protection lasts 10 years. After this, you must renew the registration to ensure it is still in force.
Conditions to satisfy
There are various conditions that must be satisfied for a trade mark to be registered:
- It must be distinctive (unique).
- It must not be descriptive. For example, if you wanted a trade mark for your fast food restaurant you could not register the term “fast food”.
- It cannot be deceptive.
- It cannot be a common surname like Smith.
- It cannot be a geographical name such as Milan or Berlin.
- It cannot be a national flag.
- It cannot be confusable with an earlier registered mark. For example, if you wanted to register your fast food restaurant brand, you could not call it Micdonalds since this could be easily confused with McDonalds.
Once your trade mark is registered you can take legal action if someone uses it without your permission. You can also stop someone using a trade mark which is similar to yours and could lead to someone confusing your products or services with theirs.
Registering a trade mark abroad
A trade mark is a territorial right. This means that the mark is only protected in the country it is registered in. If you want to register your mark in another country, you must apply to its own intellectual property office. For example, if you want to register your mark in the USA you must apply to the United States Patent and Trade Mark Office.
Things are a little different in Europe. In Europe, you can make a single application to the European Union Intellectual Property Office (EUIPO) under the “Community trade mark system”. Once registered, this will give you the exclusive right to your trade mark in all the current EU member states.
Did you know? The EUIPO registers almost 135,000 trade marks every twelve months.
What would a career in trade marks look like?
There are lots of careers where you could work with trade marks:
- Trade mark attorney – helps businesses to register and protect their trade marks.
- Trade mark examiner – assesses trade mark applications and decides whether they should be granted or not.
- Trade mark solicitor – a lawyer who specialises in trade mark law and can help with using and enforcing trade mark rights.
- Trade mark paralegal – involved in registering and maintaining trade marks.
- Trade mark secretary – an administrative role supporting trade mark attorneys, solicitors and/or paralegals.
- Trade mark searcher – looks through trade mark registers to identify if there are any similar or identical marks that could prevent a new trade mark from being registered.
Visit our IP career options webpage to find out more about different trade mark-related careers.
Extra information
If you want to find out more about trade marks, then take a look at the following:
- Chartered Institute of Trade Mark Attorneys (CITMA) website – https://www.citma.org.uk/trade-marks-ip/what-is-a-trade-mark.html
- UK IPO website – https://www.gov.uk/how-to-register-a-trade-mark#:~:text=You%20can%20register%20your%20trade,of%20your%20product%20or%20service
- European Union Intellectual Property Office website – https://euipo.europa.eu/ohimportal/en/trade-marks
Last Updated: November 5, 2024