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Trade mark definition

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What does Trade mark mean?

Section 1 of the Trade Marks Act 1994 defines 'trade mark' as any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings.

A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging. References in the Act to trade marks include, unless the context otherwise requires, references to 'collective marks' (i.e. marks distinguishing the goods or services of a member of the association which is the proprietor of the mark from those of other undertakings) and to 'certification marks' (i.e. marks indicating that the goods or services in connection with which they are used are certified by the proprietor of the mark in respect of various stated matters such as origin).

Corporate Crime

A trade mark may,

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Vertical agreements—drafting for MVBEO—checklist

Vertical agreements—drafting for MVBEO—checklist This Checklist sets out the essential points that should be considered under The Competition Act 1998 (Motor Vehicle Agreements Block Exemption) Order 2023 (No 2) (MVBEO) when drafting new vertical agreements, or updating existing vertical agreements, in relation to motor vehicle aftermarkets for the provision of repair and maintenance services or the distribution of motor vehicle aftermarket goods (together, the motor vehicle aftermarket). This Checklist is not intended to be a comprehensive guide to the MVBEO but should be used where a commercial lawyer wants to ensure that the vertical agreement falls within the MVBEO (and any guidance issued under it). For further information, see: CMA Guidance: MVBEO. A flowchart is also provided at the end of this Checklist, setting out the main steps to follow when assessing whether an agreement falls under the MVBEO. Introduction to MVBEO Any agreement which affects trade and restricts competition in the UK may be subject to the prohibition on anti-competitive agreements under the provisions of Chapter I of the Competition...

Using IP as security: key issues—checklist

Using IP as security: key issues—checklist This Checklist is drafted from the lender’s perspective, and it is designed to highlight the key issues to consider and steps to follow when using IP as security, such as to: • consider the nature of the IP right • consider the type of security • consider ownership, duration, and third-party rights • consider validity and maintenance of the right • value the IP right • consider associated rights and property • register the security at the appropriate registry For further information on taking or perfecting security over IP, see: • Practice Notes: Taking security over intellectual property rights, Taking security over intellectual property—practical points, Perfecting security over intellectual property rights and registering security at an intellectual property registry and Effect of registering security at IP registries on priority of security interests • Precedents: Assignment of intellectual property by way of security, Agreement for assignment of patent by way of security in pursuance of loan agreement: Encyclopaedia of Forms and Precedents (21(1)) [1172], Mortgage...

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EU trade mark registration—flowchart

EU trade mark registration—flowchart This Flowchart provides an overview of the EU trade mark (EUTM) registration process as implemented by the EU Intellectual Property Office. It covers the key stages of application; publication; opposition; registration; cancellation and expiry. For more information about applying for an EUTM (including use of the fast-track procedure), see Practice Note: EU trade marks (EUTMs). For an example search sheet setting out instructions as to the scope of the clearance searches to be conducted prior to

Passing off—flowchart

Passing off—flowchart Passing off action Passing off is a common law action that is used to protect unregistered trade mark rights in the UK. The stages of the Flowchart cover establishing a claim for passing off covering: • the three essential elements of goodwill, misrepresentation, and damage • sending a letter of claim, issuing proceedings and applying for an injunction • commencing proceedings in the general Intellectual Property List or the Intellectual Property Enterprise Court sub-list in the Business and Property Court, in the Chancery Division at the High Court • case management including allocation, the case management conference and directions • disclosure and evidence including inspection, additional disclosure and survey evidence • trial preparation and post-trial activities such as election between damages or an account of profits • applications to appeal Stage 1—preparing to bring a claim and pre-action matters Claim preparation and pre-action matters—Practice Notes • Passing off—goodwill, misrepresentation and damage • Trade mark and passing off disputes—a practical guide • How to run an IP dispute...

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Trade mark offences

For certain types of trade mark infringement cases (such as wilful infringement for the purpose of manufacturing counterfeit goods), the usual civil remedies may be considered inadequate by the trade mark owner and from a public policy perspective. For such cases, there are criminal sanctions available under the Trade Marks Act 1994 (TMA 1994). These sanctions are most often used against parties involved in counterfeiting goods, where false trade marks are applied in order to imitate the products of leading manufacturers. However, TMA 1994 has a far wider reach to impose criminal penalties for other forms of unauthorised trade mark use, including offences without any evidence of dishonesty.Trade mark crime should be considered in the wider context of IP crime and, in particular, may overlap with copyright crime. For example, the production of a pirate film on DVD would be a copyright crime while the production of the DVD packaging including copies of a film studio's marks would be a trade mark crime. For more information on copyright crime, see...

Brussels I (recast)—the harmful event (art 7(2))

Brussels I (recast)—the harmful event (art 7(2)) This Practice Note considers the requirement for a harmful event to enable a court to have special jurisdiction under Article 7(2) of Regulation 1215/2012, Brussels I (recast). It then considers what is a harmful event when considering specific types of claims: economic loss, damaged or defective goods, personal injury claims, intellectual property claims, actions for inducing breach of contract as well as other types of claims. For guidance on the general principles that apply when dealing with tort and delict claims under the regulation, see Practice Note: Brussels I (recast)—tort and delict claims (art 7(2)). For guidance when dealing with contract claims under the regulation, see Practice Note: Brussels I (recast)—contract claims (Art 7(1)). Authorities Authorities for the construction and application of the wording in Article 7(2) of Regulation (EU) 1215/2012, Brussels I (recast) which were decided either under Brussels I or the Brussels Convention will be applicable and are referred to in this Practice Note. This is because: • the wording of...

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Online brand protection—training materials

Online brand protection—training materials These training materials are template PowerPoint slides which show how businesses can protect their online brands. They include guidance upon protecting trade marks and domain names. It is intended that these slides will be used as a starting point for someone who needs to train others on brand protection. These slides can be amended as necessary to suit individual requirements, but will help the speaker by speeding up preparation times. The training materials are customisable. Click the link below to download the presentation. Contents • Terminology • The internet and key brand risks • Deciding on new branding • Managing an existing brand • Trade mark infringement and passing off actions: — Trade mark infringement — Passing off — Domain names — Keyword advertising — Objecting to other trade marks • Advertising practices • Defamation • Responding to a brand management crisis • Conclusion Purpose of slides/seminar The slides are intended for a general rather than specialist audience. It is anticipated...

Joint venture shareholders’ agreement—deadlock (50:50)

Joint venture shareholders’ agreement—deadlock (50:50) This Agreement is made on [insert date] 20[insert year] Parties 1 [Insert name of first shareholder] incorporated in England and Wales under number [insert company number] whose registered office is at [insert address] ([A]), 2 [Insert name of second shareholder] incorporated in England and Wales under number [insert company number] whose registered office is at [insert address] ([B]), and 3 [Insert name of the company in which the shares are held] incorporated in England and Wales under number [insert company number] whose registered office is at [insert address] (the Company). BACKGROUND (A) The Company, at the date of this Agreement, has in issue ordinary shares of £[insert nominal value] each, of which one ordinary share has been issued fully paid and is registered in the name of [A] and one ordinary share has been issued fully paid and is registered in the name of [B]. (B) The Company shall carry on business in accordance with the terms and conditions of this Agreement....

Dive into our 119 Precedents related to Trade mark

Is there any guidance or case law regarding whether there is a genuine use of a trade mark within the EU if a party provides their services in question outside of the EU, but those services can be booked from within the EU? By way of example, a hotel may be located outside of the EU but customers may book rooms to that particular hotel from within the EU

Is there any guidance or case law regarding whether there is a genuine use of a trade mark within the EU if a party provides their services in question outside of the EU, but those services can be booked from within the EU? By way of example, a hotel may be located outside of the EU but customers may book rooms to that particular hotel from within the EU For the purposes of this Q&A, we have assumed that the trade mark in question is registered in the EU, and that the hotel room referenced is booked directly with the hotel and not through a third party provider. The basic rule is that the trade marks system operates on a use it or lose it system. Trade marks must be used or if not used then the registrations are revoked. The absence of use must be for a clear five year period and there must be no 'proper' reasons for that non-use. Use can also be relevant in other respects,...

Does UCTA 1977 apply to service contracts?

Does UCTA 1977 apply to service contracts? Unfair Contract Terms Act 1977 (UCTA 1977) In general, the Unfair Contract Terms Act 1977 (UCTA 1977) is primarily concerned with liability as between businesses. It provides protection to varying degrees in respect of specific types of liability. It does not deal with all types of liability (for example the law on penalty clauses is not covered by UCTA 1977), nor does it provide rules on the fairness of contract terms generally. To determine whether UCTA 1977 applies, it is therefore necessary to consider both the type of contract and the nature of the liability in question, and to consider both of these factors in light of the various provisions for application and exemption within UCTA 1977. UCTA 1977, s 1(1)(3) provides: ‘(3) In the case of both contract and tort, sections 2 to 7 apply (except where the contrary is stated in section 6(4)) only to business liability, that is liability for breach of obligations or duties arising— (a)...

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Court orders parties to attempt mediation (DKH Retail Ltd v City Football Group Ltd)

Dispute Resolution analysis: This decision considers an application by the claimants for the court to order the parties to mediate their dispute pursuant to the courts’ powers to do so in CPR 1.4(2)(e) and CPR 3.1(2)(o), following the leading Court of Appeal decision of Churchill v Merthyr Tydfil County Borough Council in which the Court of Appeal determined that courts have the power to order parties to engage in a non-court based dispute resolution process.

IP weekly highlights—16 January 2025

This week's edition of IP weekly highlights includes: a hand-picked summary of news analysis, updates and new content from the world of IP. These highlights focus on the key rights of copyright and associated rights, database rights, trade marks and passing off, designs, and patents as well as covering issues relating to confidential information, know-how R&D and IP disputes all mainly from a UK and European perspective.

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