Introduction To TRADE MARKS AND DESIGNS

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Introduction ToTRADE MARKS AND DESIGNS

• Presented by Janet Bray
• L. J. Bray Co.
• Raw Holme
• Midgehole Road
• Hebden Bridge
• West Yorkshire
• HX7 7AF
• Tel [phone]
• Fax [phone]
• 19 January, 2006
  E-mail LJBrayCo_at_aol.com

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TRADE MARKS

• What is a Trade Mark?
• Any sign used to distinguish the goods and
  services of one trade from those of another
• What Types of Marks can be Registered?
• words
• designs
• letters
• numerals
• the shape of goods or their packaging
• sounds or smells, provided that the mark can be
  represented graphically
• colour marks, e.g., pink paraffin
• moving image marks

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TRADE MARKS

• Trade Marks that may be Excluded from
  Registration
• Marks which consist exclusively of words which
  describe the goods or services or any
  characteristic of the goods or services
• Geographic names and common surnames are likely
  to be refused because other traders may want to
  use these words quite legitimately on their own
  goods or services and should be free to do so.
• Logos which are common to a particular trade
• Three-dimensional shape marks if the shape is
  one which serves a useful purpose, or is one
  which adds substantial value to the goods

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TRADE MARKS

• Trade Marks which are Inherently Unregistrable
• Marks which are offensive
• Marks which are against the law, e.g. promote
  illegal drugs,
• Marks which are deceptive
• Marks which include, e.g. royal insignia,
  coats-of-arms, national flags, or the emblems of
  certain international organisations
• Marks which are clearly somebody else's property
• Other Unregistrable Trade Marks
• Marks which are the same as or similar to an
  earlier registered mark
• May be possible to register if honest concurrent
  use or consent of earlier trade mark owner
  obtained
• Important to search for conflicting marks before
  adopting a new mark

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TRADE MARKSUK APPLICATION PROCEDURE
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TRADE MARKS

• How are Trade Mark Rights Enforced?
• Unregistered Trade Marks
• Sue under common law for passing off
• Registered Trade Marks
• Sue under trade mark law for an injunction and
  damages
• Ignorance of trade mark rights is not a defence
• Registered trade marks can be revoked if the mark
  is not used within 5 years of registration date
• Sue for passing off in addition
• In some circumstances, institute criminal
  proceedings for counterfeiting

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DESIGNS

• What is a Design?
• The appearance of the whole or a part of a
  product resulting from the following features
• lines
• contours
• colours
• shape
• texture
• materials
• What is a Product?
• any industrial item
• any handicraft item
• packaging
• get-up
• graphic symbols
• component parts intended to be assembled into a
  complex product 

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DESIGNS

• What Types of Designs can be Registered?
• To qualify for registration a design must be
• New
• Have individual character 
• Registrations are not granted for designs which
  -
• are concerned with how a product works
• are part of a complex product that is not visible
  in normal use
• are contrary to law or morality
• How is a Design Application Made? 
• File application at Designs Registry containing
• Name of product to which design is applied
• Representations of the design

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DESIGNS

• What is the Application Procedure?
• 12 month grace period to file application
• Usually only a formality examination is carried
  out
• File overseas applications within 6 months of UK
  or European application
• Renew registrations every 5 years for a maximum
  of 25 years
• How are Registered Designs Enforced?
• Granting licences to obtain royalties
• Suing infringers for an injunction and damages
• Ignorance of registered design rights is not a
  defence
• BUT a registration can be revoked if found to be
  invalid during legal proceedings

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DESIGNS

• What are Design Rights?
• Unregistered design rights are property rights
  which arise automatically in a design once it has
  been created but only exist to prevent copying
• How Long do Design Rights Last?
• UK design rights last for 10 years after a design
  is first marketed but licences must be granted
  during the last 5 years
• European Community design rights last for 3 years
  after a design is first marketed
• How are Design Rights Enforced?
• By granting licences
• Suing infringers for an injunction and damages
  BUT
• Ownership of design right must be proved
• Copying of the design right must be proved to the
  satisfaction of the court