Detailed Information About Trade Marks Important Disclaimer Definition Registered trade marks can include brand names, logos, 3-dimensional shapes, colours, sounds and smells, depending on the country in which they are registered. Take a look at some sample trade mark registrations before reading further, as referring to actual registrations will assist you in understanding how the system works. Copies of trade mark registrations may be perused without fee or for a nominal charge at all local Trade Mark Offices and some Trade Mark Offices have online searching facilities (for example the US Patent and Trade Mark Office provides online searching and we suggest you take a look at some trade mark registrations to assist you in understanding the below explanation. Specifications of Goods and Services You will see that trade mark registrations cover specific lists (or "specifications") of products (or "goods" as they are called) or services which fall into different classes. The classification system used by almost all countries is the International Classification of Goods and Services also called the "Nice Classification" (now at the 8th Edition) which is divided into 45 classes. The first 34 classes cover goods and the remaining 11 classes cover services. For a list of the goods and services falling in each class, click here. If you can't find your product or service in the list, contact us and we will help you with classification. Many products and services fall into more than one class. Trade mark applications are therefore filed in one or more classes covering goods/services falling in each class listed. In some countries one application can cover several classes but in others, a separate application is required in each class. Representation of Trade Marks in Trade Mark Registrations Word trade marks are usually registered as written in block capitals in black. In the majority of countries, a registration for a mark in this format will allow you to prevent others from using your mark in any font or script and in any colour. A registration for a mark in a stylised format and/or in a particular colour may not necessarily prevent others from using the mark in a different stylised format and/or colour. However, an additional registration for the stylised form of your mark will give you stronger protection as it is always easier to stop infringers who use an identical copy of your mark if the mark they are using is also identical to the one you have registered. Similarly with logos, these should usually be registered in black & white as this will cover the use of the mark in any colour, but it is useful to also have a registration in colour. In some countries black & white and colour versions of the same marks can be included in a single application for registration. Combination Marks Trade marks often comprise a combination of words and pictures/logos. In general, it is advisable to register the word and the logo separately rather than together as a composite mark. This is because use of one part, say the word only, of a composite mark may not necessarily infringe a registration for the combination of the word and the logo. The same applies for combinations of English words and their equivalents in foreign scripts. Registrability Not all trade marks are registrable. For a trade mark to be registrable, it must be new and it must be distinctive. If the trade mark is not new or distinctive, it will not be possible to get a valid trade mark registration. A trade mark is generally only considered to be "new" if no-one else has used or registered it for use on products or services the same or similar to yours. For a trade mark to be distinctive, it must be more than just an obvious word or picture and it must not describe the nature or any features of the product or service concerned. Many types of trade marks in common use may not be registrable. This usually includes trade marks that are the name of the products or services they are used on (e.g. "Investment Advisory Services" for investment advisory services); marks that are "laudatory" (e.g. "best", "wonderful", or "amazing"); marks that are ordinarily the name of a place; marks that are people's surnames (unless they are stylised, as in a signature); and marks which are made up of numbers only. There are exceptions to these rules, however, and you should contact us to help you decide whether your mark is likely to be registrable. The reasons the above types of marks are not usually registrable are either that they are words (or numbers) which other companies may quite reasonably want to use on their products or services, and it would be unfair to prevent them from doing so by giving the rights in those words to one company or person only; or that consumers, on seeing these words, could not be sure of the origin of the products, since the words concerned are likely to be used by many different companies. Marks which deceive consumers by implying the products concerned are something they are not, are also not allowed. Filing, Examination and Grant Once a trade mark application has been prepared, the application must be filed in a Trade Mark Office for the grant of a Trade Mark Registration Certificate, which is issued by the Government concerned. Registration Certificates are not issued automatically, however. First, the relevant Trade Mark Office or rather the trade mark examiners working in the Trade Mark Office, must check the application and ensure that it complies with the laws of their country. Examination is conducted in two steps. The first step is a formality or "preliminary" examination in which the application documents and fees (and sometimes some other aspects of the application depending on the country and type of protection sought) are checked for completeness and compliance with the relevant Law and Regulations. In most countries preliminary examination is completed promptly, within a month or so of filing the application. The application then enters a queue in which it must wait its turn for "substantive" examination by a trade mark examiner. In most countries, substantive examination takes around one year. What do examiners look for when they examine a trade mark application? In many countries, trade mark examiners must determine, as far as possible, whether or not the trade mark really is a new mark. Examiners do this by searching through the local database of existing marks. If they find something they believe is the same or similar to the mark in question, which covers the same or similar goods or services, they notify the applicants or, more usually, their trade mark attorneys. The trade mark attorneys must assess the documents uncovered and decide how best to proceed. This may involve changing the list of goods or services so that they do not cover the goods/services in the marks the examiner has uncovered (this is called "limiting the scope" of the specification of goods/services); agreeing to have conditions of use attached to the mark; or if they disagree with the examiner, arguing their clients' position with the Trade Mark Office. Another part of examination is the assessment of a mark to determine whether or not it is "distinctive" (see "registrability" above). If an examiner believes a mark to be indistinctive, the applicants or their attorneys will be given an opportunity to argue that the mark is indeed distinctive. The process of corresponding (more akin to negotiating) with a Trade Mark Office about the registrability of a mark is called "trade mark prosecution" and can take some time. The time taken and the number of letters issued by the Trade Mark Office differs from country to country and case to case. Providing any objections to the registration of the trade mark have been dealt with, the mark will be advertised and a time period of 2 or 3 months will be given for third parties to oppose the registration of the mark, should they wish to. Providing no opposition is lodged within the prescribed time period, a Trade Mark Registration Certificate will issue. This gives the applicants, or anyone they may sell the mark to, the right to exclusive use of the mark for an indefinite period, providing regular renewal fees are paid (usually every 10 years) and the mark is put into use within a certain period (usually five years) from registration. If the objections cannot be dealt with, the application will be refused and no Certificate will issue. The applicants will have no registered rights in the mark concerned. This often happens when it is found that the mark has already been registered by another party and is therefore not new. Since the application documents have already been prepared and a full examination has been undertaken, it is not possible to obtain any refund from the Trade Mark Office or from trade mark attorneys if this occurs, and it is therefore wise to have a trade mark attorney do their own pre-filing search of the relevant databases to try to determine in advance whether or not a trade mark is new and therefore the likelihood of a Trade Mark Registration Certificate being awarded. Contact us or use our online instruction letter to file a trade mark application. Intellectual Property FAQ Disclaimer IMPORTANT - Please read this disclaimer carefully as it concerns your rights. The Intellectual Property FAQ are intended to provide general information only and not advice with regard to specific cases. The information given is non-exhaustive. Furthermore the relevant law and its interpretation is liable to change and may vary from country to country. You should contact us for advice specific to your own situation. Whilst every effort has been made to ensure the accuracy of the information, no responsibility can be accepted by any member (firm or individual) of the Lloyd Wise Group for any inaccuracies or omissions, however caused therein. Nor can any responsibility be accepted for any loss or damage to any company or person as a result of actions taken or not taken on the basis of the Intellectual Property FAQ.