Trade marks and brands are often the largest non-physical asset of a business or organisation so, given its importance, it is worth re-visiting a few trade mark basics.
On a topical theme, the “Rio 2016” brand is among the largest sources of funding for this summer’s Olympic Games. The intellectual property of the Games covers everything from logos and mottos to torches and flames and is owned worldwide by the International Olympic Committee (IOC) which zealously enforces its rights and imposes hefty fines for unauthorised uses. Only official organisers and partners can use the official Olympic brands and this year’s partners include Coca Cola, McDonalds and Samsung.
So how do trade marks work?
- A trade mark is any sign, such as a brand name, logo, colour, shape, scent and/or sound, which distinguishes the goods of services of one business from another. Well-known examples of registered trade marks include the Nike “Swoosh”, Christian Louboutin’s red sole and Harley Davidson’s distinctive engine sound;
- The purpose of a trade mark is (a) to identify the brand and the origin of the goods or services, (b) to prevent competitors from using it, and (c) to serve as an indication of quality;
- In the UK trade marks can be registered with the Intellectual Property Office (www.ipo.gov.uk). It is possible to register a Community trade mark at the IPO to cover all 28 EU member states. However, it is unclear how that will operate following Brexit and there is a real possibility that registering trade marks in countries outwith the UK will increase in both cost and administration;
- For trade marks to be accepted for registration they must be distinctive and not merely descriptive or generic (i.e. a shop selling guitars which called itself “Guitar Centre” is unlikely to be registrable but “Red Dog Music”, a guitar shop in Edinburgh, has successfully registered its trade mark). It is recommended that a (free) initial search of the online trade mark register at the Intellectual Property Office is carried out prior to coming up with business names and brands;
- Trade marks are registered in respect of particular geographic areas (such as UK, Europe, USA etc) and in respect of specific classes. There are 45 classes in total which include anything from vehicles, chemicals, machines and musical instruments to clothing, tobacco and beers. It is this classification system that allows the same word ‘POLO’ to be used by Volkswagen for a car and by Nestle for a mint as they are different products in different classes; and
- It is possible to have an unregistered trade mark but it can be difficult and expensive to enforce your rights under the law of ‘passing off’ if you suspect another person is using it.