As seen in the news recently, German discount supermarket chain Lidl is bringing court proceedings against Tesco for infringement of their trade mark rights, claiming that Tesco used Lidl’s distinctive blue square background featuring a yellow disk to promote Tesco’s discount ClubCard deals.
Last week the High Court rejected Tesco’s argument that Lidl had registered some of their marks in bad faith, and will permit Lidl in an upcoming trial to rely on survey evidence showing the extent customers associate the logo with the German supermarket. The judge emphasised that the cost of the dispute shows the importance of their brand to both businesses, with legal fees expected to exceed £1,000,000 each.
Given the value of having a clear trade mark registration to protect your brand, we’ve highlighted below five ways to maximise your chance of registering a trade mark successfully, along with how to monitor your trade mark for potential infringements (such as those Lidl has alleged in this case).
Five things to check when registering a trade mark
1. Make sure your trade mark can be clearly represented in your application
You must be able to either draw or otherwise represent your trade mark on paper (known as graphical representation) or use other generally available technology (eg using an audio or audiovisual file) to present it for application. Your trade mark must be represented clearly and precisely, so that the relevant authorities and members of the public can understand what you are trying to protect.
2. Your trade mark must be distinctive
This means that the trade mark must clearly show customers that the marked goods or services come from your business, and must distinguish your goods or services from those sold by your competitors. Determining this can be complex, but in general your trade mark should pass this test if it includes some of the following:
- a stylised logo with or without any words (which can be a moving image, hologram or multimedia);
- invented words (such as Sparqa);
- words which have no link to the products or services you sell (such as Apple for computers or Red Bull for drinks);
- an unusual combination of two descriptive words (for example, ‘Baby-Dry’);
- an unusual or distinctive shape or sound (eg the combination of the shape of the Louboutin heel and its distinctive red sole, or the ‘I’m Lovin’ it’ jingle by McDonald’s).
Generic words or phrases (eg ‘Luxury Beds’) usually can’t be registered as a trade mark unless they form part of a distinctive logo. Similarly, it’s unlikely that your trade mark will be distinctive if you name it after a place (eg ‘Cornwall Windsurfing’) unless your brand has such a strong market presence that people always think of your business when they say those generic words.
3. Your trade mark can’t be of a prohibited or objectionable nature
Your trade mark application is likely to be challenged or rejected if it:
- is the basic or necessary shape of your particular type of good (eg the standard shape of a slab of chocolate);
- is deceptive or immoral;
- mentions location-specific foodstuffs when your product(s) do not come from there;
- uses national symbols, flags or coats of arms without the appropriate consent;
- includes anything which suggests it has royal authorisation or patronage without the appropriate consent; or
- includes any references to the Olympics, Olympians, Olympiads or the word ‘Anzac’.
4. Your trade mark can’t infringe anyone else’s registered trade marks
From the date on which your trade mark application is published in the UK Trade Marks Journal, other people and businesses have two months to object. This is known as the opposition period. Most commonly, competitors can object if they believe your trade mark:
- is not capable of being a trade mark, eg because it is too generic; or
- is so similar to their own registered trade mark that it infringes their rights.
The UK IPO provides a free service to help you:
- check whether any existing trade marks similar to yours could cause conflict;
- identify the classes of goods and services you want to protect your trade mark for; and
- identify whether your trade mark may be prohibited or objectionable.
Note that an approval through the tool does not guarantee that the UK IPO will register the trade mark. You will still need to go through the usual trade mark application process. See our step-by-step guide to applying for a UK trade mark online.
5. Make sure you register your trade mark over the right goods and services
Your competitors are only barred from using similar branding to your trade mark in respect of similar products or services, so being clear about what products and services your brand will cover is important. For example, the word ‘Galaxy’ is trade marked separately by Mars for confectionery and Ford for motor vehicles.
You can register one trade mark for more than one type of product or service if you wish. Try to anticipate how your business will grow over the next 10 years when deciding what you will use your trade mark for, but it’s important to be realistic – if you don’t use your trade mark for all of the things your register it for, it can be open to challenge by someone wishing to use it for one of your unused categories.
Monitoring your trade mark for infringement
Someone infringes on your trade mark when they:
- use your trade mark on identical goods;
- use something similar to your trade mark, on goods that are identical or similar to those that your trade mark is registered for, which means the public will be confused about who actually made the goods or provides the services; or
- use your trade mark or something similar and their use is detrimental to your trade mark’s distinctiveness or reputation, or takes unfair advantage of its reputation.
You will generally need to monitor potential infringements of your intellectual property yourself, as the UK IPO won’t do this for you. Ways to monitor for trade mark infringements include:
- searching the internet, online marketplaces and social media;
- using automated tools like Google Alerts to notify you when a certain phrase is published on the internet;
- using the Companies House Register Search to search for companies which have been registered with similar names to yours;
- checking for domain names which have been registered using similar names to your business;
- monitoring new trade mark applications in the UK Trade Marks Journal; and/or
- hiring another business to monitor for IP infringements on your behalf (however, this can be very costly).
If you discover IP infringements, you can take a number of steps including writing a cease and desist letter to the person who may be infringing your IP rights, using an online marketplace’s reporting tools to report infringements, contacting the Police Intellectual Property Crime Unit, or taking court proceedings.
Marion joined Sparqa Legal as a Senior Legal Editor in 2018. She previously worked as a corporate/commercial lawyer for five years at one of New Zealand’s leading law firms, Kensington Swan (now Dentons Kensington Swan), and as an in-house legal consultant for a UK tech company. Marion regularly writes for Sparqa’s blog, contributing across its commercial, IP and health and safety law content.