The skill of search
Before you choose a trademark for your business (e.g. choosing a domain name or a name for a new product or service) it is usually sensible to conduct some kind of trademark search to determine whether your proposed mark might infringe another’s rights. At the very least, you should search using the major search engines for examples of actual use, and search at the key trademark registries.
For instance, a UK business providing services in the EU and the US should search at the UK Intellectual Property Office (www.ipo.gov.uk), the Office for Harmonization in the Internal Market (www.oami.eu), and the US Patent and Trade Mark Office (www.uspto.gov). Searches should cover the actually proposed mark and any obvious variations (e.g. of spelling).
If the new mark will represent a significant investment, you should instruct a trademark professional to conduct the search.
The pre-eminent defense available
There are lots of contentions and strategies you can use to defend yourself against a claim of trademark infringement.
If the trademark has become generic (e.g. Nirma, aspirin, gramophone), or if the trademark is over 5 years old and the owner of the registration hasn’t actually used the trademark in the 5 years preceding the claim, you can seek to have the registration revoked. If the trade mark should never have been registered, for example, because it conflicts with an earlier trade mark, or did not meet one of the other basic criteria for registration, you can seek to have the registration declared invalid.
The difference between revocation and invalidity is that the former affects the validity of the mark from the date that revocation is ordered, whereas the latter invalidates the mark ab initio, in effect re-writing the mark’s legal history.
The bullying trick
If you threaten someone with proceedings for infringing a registered trademark, then you risk being on the wrong end of a legal action for “baseless threats” under the Trade Marks Act 1999.
Certain kinds of threat can be made without creating this risk – namely, where the threatened proceedings relate only to acts of applying the trademark to goods, importing the goods bearing the trademark, and/or supplying services under the trademark. You can also notify others that a trademark application has been made or a mark registered without creating this risk.
This “threats” action is peculiar to UK trademark law. Because of this unusual law, you should always seek professional advice before accusing someone of infringing your trademarks.
Uses and abuses of (R) and (TM)
It is a criminal offense (punishable by a fine) falsely to represent that a trademark is registered or to make a false representation as to the goods or services for which the trademark is registered. The use of the (r) symbol amounts to a representation that a mark is registered; however, the use of the (TM) symbol probably does not.
The Trade Marks Directive does not use the word “generic”. Instead there are three categories of mark which are not registerable on broadly “generic” grounds.
First, trademarks which are “devoid of any distinctive character” are not registerable.
Second, trademarks which “consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of the goods or rendering of services, or other characteristics of the goods or services” are not registerable.
Third, trademarks which “consist exclusively of signs or indications which have become customary in the current language or in the bona fide and established practices of the trade” are not registerable.
However, if a trademark has acquired a distinctive character as a result of its actual use, then these bars to registration can be ignored. BRITISH GAS is a good example of a trademark which has acquired a distinctive meaning.
Domain name game
The system of domain name dispute resolution, embodied in ICANN’s Uniform Dispute Resolution Policy and its offspring, is linked to the trademark system. Trademark rights can be used to secure domain names before they go on public sale (via “sunrise” periods) and to relieve domain name registrants of their domain names. The connection is difficult, not least because there is a mismatch between the scope of trademark rights and the uses of domain names.
Trademarks are national rights whereas domain names (even country code domain names) are inherently international; moreover, trademark rights are specific to certain goods and/or services, whereas domain names are not.
The offense of falsely representing that a trademark is registered (see above) is not the only trade mark-related crime on the statute book. However, because of the way in which the trademark crime provisions have been drafted (in particular, a reference to “material” is involved) it is arguable you cannot commit a crime under English law by including trademark on a website. On the other hand, it clearly could be a crime to sell counterfeit goods bearing others’ trademarks via your site.