<

	TRADE MARKS Introduction; Use; Registration; Product Marking; Foreign Applications; Community Trade Mark (CTM) Registration; International Trade Mark Registration (Madrid Protocol); Novelty/Timing; Searches.
	Registration To avoid the disadvantages of the common law protection, it is possible to register trade marks, thereby securing rights before a mark is used, and providing a prima facie right to bring action for infringement without the need to prove that you own the rights in the mark. The grant of a certificate of registration gives you that right. Registration is secured by preparing and filing appropriate documents at the Trade Marks Registry, where the application is examined, objections raised and other formalities dealt with before the mark can be registered. Marks which are capable of distinguishing the goods of the applicants from any other goods should be capable of registration. Entirely non-distinctive marks cannot be registered. Examples which fall into this category are common surnames and wholly descriptive terms. Such marks which might otherwise be unregistrable may become registrable provided evidence of sufficient use of the mark can be produced to demonstrate that the mark has become distinctive of the goods of the applicant. A mark will not be registered if it is already registered by another party or if there is a confusingly similar mark already on the Register. An application must be made in each class of goods or services for which protection is required and a single application may cover more than one class of goods or services. It usually takes between 6 to 12 months to register a trade mark, but the first applicant has a better right to the mark than any subsequent applicant, from the date of application. After a trade mark has been registered proceedings for infringement can be brought and dated back to the date of application. Once a mark is registered, it provides the proprietor with the right to bring an action for infringement against anyone using the same or closely similar mark in relation to the same or similar goods and/or services covered by the registration. A registration will become vulnerable to attack for non-use if it remains unused in any continuous period of 5 years from the date of registration. If you have marks which are not currently in use, you should consider re-registering to secure further protection and prevent others from seeking to cancel the registration on the basis of the non-use. If you find competitors owning marks which are of interest to you and which you know to be unused, you can seek to acquire those marks by assignment under threat of rectification proceedings. It is prudent to review the trade mark portfolio to ensure that the marks are still in the form in which they are used, and cover all the goods and services in which you have a current interest. It is important to keep the marks in the name of the current proprietor or user to ensure that the marks are not deemed deceptive as a result of use by companies other than the registered proprietor. For trade marks (including service marks), passing off and licensing, contact Ian Smith in our Bristol office.