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IP Cases & Commentary – Details

25 March 2010

What is a Trade Mark?

A trade mark is any sign used by a business to distinguish their goods or services from those of their competitors. Typically, a trade mark may consist of a word or device (logo), although more unusual signs such as sounds, smells, gestures, colours or slogans can also function as trade marks.

Registered trade mark protection is territorial in nature, such that it is necessary to apply for a trade mark in each country where you wish to trade. You can apply for trade mark protection nationally on a country by country basis. There are also some trade mark systems which allow you to obtain protection in a number of countries by means of a single trade mark right. For example, the Community trade mark registration system covers all 27 member states of the European Union in a single right. A Benelux trade mark registration covers the countries of Belgium, The Netherlands and Luxembourg in a single trade mark right.

Since 1996, it has also been possible to obtain an international registration under the Madrid Agreement or Madrid Protocol, designating countries around the world of particular interest. At present, more than 80 countries are members of the system and include west and eastern European countries as well as the USA, Japan, Singapore and China and some African states. The international system gives the applicant a bundle of separate national rights but allows for administrative and cost savings by proceeding through this route. Further information on the international system can be obtained here or by contacting your D Young & Co trade mark advisor.

Trade mark protection is also specific to particular goods and services as specified in the trade mark application. Most countries of the world use a classification system to group together different types of goods and services for the purposes of trade mark registration. The UK, The Community Trade Mark Office and the International Registration System (under the Madrid Agreement or Madrid Protocol) use the Nice classification of goods and services which has 45 classes currently. For a listing of the different classes, see the WIPO website: http://www.wipo.int/classifications/nivilo/).

Some countries such as the United Kingdom also allow for registration of certification and collective marks. The function of a certification mark is to indicate that goods or services comply with a certain objective standard, i.e. to safety or quality (for example, WOOLMARK). The function of a collective trade mark is to indicate who is entitled to use the trade mark (for example, members of the association which owns the mark). CIPA is a collective trade mark used for the Chartered Institute of Patent Attorneys.

Whichever system of registration is used, official fees are payable to the relevant local intellectual property office. In some countries, official registration fees are also payable at the end of the process.

The official fee for a UK trade mark application is currently £170 for the first class or category of goods or services and £50 for each additional category. A Community trade mark application covering all 27 member states of the European Union costs around EUR900 to file. This automatically covers up to three classes of goods and services for the same official fee. Costs of international registrations will depend on the particular jurisdictions designated.

In addition to the official fees, D Young & Co will charge for our services in advising on the new application and assisting in the preparation of the application, including devising an appropriate class specification. It is important to ensure that the application covers all proposed business activities, since it is not possible to amend the claim to include additional items once the application has been filed. D Young & Co’s service charge for a UK filing is £337 for the basic application and £133 for each additional class of goods or services claimed. Our costs for preparing a Community trade mark application are presently £648 for up to three classes of goods and services.

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