There are two systems for the protection of trademarks in the UK – a formal registration process, handled by the Trade Mark Registry and based on statute – the Trade Marks Act 1994; and an action called passing off, which is an unregistered right, based on case law.
The benefit of registering a trade mark is that, subject to payment of renewal fees, it can last indefinitely. It provides the owner with a monopoly right, so there is no need to prove copying for a valid infringement action to exist.
What can be registered? – the most common examples are marks that consist of words or logos, such as the name of a business or product, and slogans used to promote them (think of the Nike tick symbol and words/letters such as FCUK). Also 3D shapes (the Coca-Cola bottle has also taken on a life of its own and is recognised all over the world) and even colours (Cadbury’s purple), even smells and sounds such as Intel’s sign off on TV adverts.
To achieve registration, the mark must distinguish between the goods or services of the applicant and the goods or services of others, and be represented graphically.
Where a mark cannot be registered or the owner simply has not done so, there may still be unregistered rights. In order to bring a claim, t he owner must be able to show goodwill or reputation in the mark, so that the public would recognise it as distinctive of his/her goods or services.
It is always preferable to register, as claims for passing off are notoriously complicated and lengthy.