How to use your trade mark

We recommend:

  1. making sure your trade mark stands out;

  2. always using your trade mark, in the form it is registered and for all the goods and services for which it is registered;

  3. always using your trade mark as an adjective.

Making your trade mark stand out

It is important to communicate to the public that your trade mark is indeed a trade mark.  As well as highlighting your asset, this will help to avoid any infringer claiming they did not know the trade mark was registered (which could otherwise affect the ability to claim damages or an account of profits connected with the infringing use).

 

There are a few ways of doing this to distinguish the trade mark from other text, including:

 

  • using capital letters, quotation marks, bold text or a different colour, for example THELOFT, “THELOFT”, THELOFT or THELOFT;

  • using an asterisk next to the trade mark, with a foot note saying that it is a trade mark, ideally specifying the owner and countries it is registered in; or

  • the R in a circle symbol ® (which indicates the mark is registered) or the ™ symbol (which indicates you consider it to be a trade mark, registered or not).

 

Note that it can be an offence to use the ® symbol in countries where the trade mark is not registered.  So if you are doing business in countries where the trade mark is not registered, it is best to instead use the ™ symbol. 

Guidance on use of a trade mark

Rights in trade marks are dependent upon use of the trade mark.  If a trade mark is not continuously used (for all registered goods and services), the registration could be removed from the Register (or partially removed) for non-use. 

 

We recommend keeping evidence of use of your trade marks to support the registration if need be.

 

A trade mark that is registered should not be amended without careful consideration, which we can advise on.

 

If the trade mark will be used on new goods or services you should ensure that the mark is free to be used for these new goods or services, and we recommend securing a new registration to provide protection for the new goods or services.

Use of trade mark as an adjective

A trade mark should always be used as an adjective qualifying a noun or verb, but not as a noun or verb itself (and not in the plural or possessive sense).

 

For example, it would be incorrect to say “Google it”.  The correct way would be to say “use Google search engine to find it”.

 

Using a trade mark in an incorrect way risks it becoming a common descriptor of a type of protect, like what has happened in some countries to sellotape and trampoline, for example, in which case you could lose exclusive rights to the trade mark.

 

Please contact us if you have any questions in relation to the above or if you need assistance.

Loft Legal Intellectual Property Law Specialist

© 2015 - 2016 by THELOFT.LEGAL

  • LinkedIn Social Icon