Trademark Law – 3 Legal Concerns When Creating a Trademark

The first concern for anyone who is creating a trademark is to make sure that the proposed trademark will be distinctive. A trade mark can be any sign that distinguishes the goods or services of one undertaking from those of others. It can be a word or words, a design, letters, numerals, a slogan, a shape, a colour or a combination of colours.

However, whatever form the trade mark takes, in order to be capable of registration it must be distinctive. That is to say, a trademark must be capable of distinguishing your goods or services from those of other traders. It is not possible to register marks that describe the goods or services or any characteristics of them (for example, words that show the quality, quantity, purpose, value or geographical origin of the goods/services), or words that are commonplace in the trade. The reason why such words cannot be registered is that they must be free for everyone to use. For example, the word “ORANGE” would not make a good trade mark for fresh fruit or marmalade, but it is perfectly acceptable for mobile phone services. Attempting to register marks that lack distinctive character can waste time and money. The best trademarks are usually invented words or logos, which have no direct relevance to the goods or services on which the trademark will be used. The more unusual and memorable the trademark, the better.

The second and most important concern, is to make sure that your new trademark does not infringe the trademark belonging to another party. Before using your trademark, therefore, it is important to have a search conducted. Although a trademark search is not compulsory, it is strongly recommended if you are thinking about adopting a new trade mark. The purpose of the search is to ascertain whether or not your proposed trade mark is available for use and registration and in particular whether there is any potentially conflicting trademark already on the Register. A trade mark search will minimise the risk of infringing another party’s earlier rights and so could save you a lot of money.

Finally, assuming that the search has not located any problems, the third concern is to take steps to register your trademark. Many small businesses are reluctant to take this step because of the costs involved. However, if you do not register your trademark you are taking a risk that someone else will exploit your brand and damage your business. A trademark registration is the quickest and cheapest way to ensure that you have the sole right to use your trademark. It is important to note that registering your name as a domain name or company name will not stop a competitor using your name as a trade mark, or trying to register your name as their own trademark. In fact, if someone else registers your name as a trade mark before you do, they may be able to stop you using your domain name and make you transfer it to them.

A trademark registration gives the proprietor the exclusive right to use the registered trademark on those goods or services for which it is registered. A registration also gives the owner the right to stop others from using confusingly similar trademarks for their goods or services or for similar goods and services. In some circumstances, the owner of a registered mark can stop others from using a trademark for goods or services that are not similar to those for which it is registered.

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