Trade mark registration

A trade mark registration is the principal device available to a business by which it may protect the goodwill of its business.

For a sign to be registrable as a trade mark it must be capable of distinguishing the goods and services of one business from those of another. The Trade Marks Act 1994 ("TMA") requires that the sign must be "distinctive". The sign may be either a word, a design, a distinctive shape of packaging (provided it is not functional) or even a smell.

A trade mark registration is a national right, though EU-wide protection is available through the Community Trade Mark system.

Trade mark infringement

Once a mark is registered, use of the mark without the consent of the owner may constitute infringement under the TMA.

Trade Mark misuse

It is desirable to make it clear that a trade mark is registered and is being used as such, but not strictly essential to use the common ™ sign. However, improper use of this sign in relation to an unregistered mark (unless registered elsewhere in Europe) is an offence. The alternative is to use the common "TM" sign.

Domain names as trade marks

An application to register an entire domain name will fail because only the distinctive parts of the name are capable of registration (i.e. the "www" at the beginning and the ".com/co.uk" at the end are not registrable). The body of the domain name can be registered provided it is sufficiently distinctive.

Cyber squatting

Cyber squatting, that is the stockpiling of internet domain names, with a view to selling them on, will not be tolerated in the UK following a Court of Appeal decision.

Metatags

Metatags are words or other tags incorporated into a website code in order to attract search engines to those sites when certain search criteria are entered. The inclusion of metatags comprising a competitor's trade mark in order to direct internet traffic away from the trade mark owner, to the competitor's website, may constitute trade mark infringement. By analogy, this activity is viewed as being similar to posting a sign with someone else's trade mark in front of your store.

Passing off