Before you can take a decision as to whether or not a registered trademark is right for your situation, you need to understand what exactly a trademark is and what effect is has.
What is a trademark?
In very simple terms a trademark identifies the source of a product or service. It addresses the age-old problem of letting people know quickly and easily who they are dealing with.
Registering your trademark establishes your ownership of it.
Not all trademarks are protectable by registration. In order to be accepted for registration, a trademark must meet the following conditions:
- It must be be clearly distinct to the specific product or service to which it is being applied. Words in common usage can be registered in specific contexts. If however a registered trademark enters common usage as a description of the product or service, the registration ceases to be valid.
The case of Microsoft v Lindows illustrates this point very well. Microsoft has registered the term “Windows” in a computing context (trademarks are registered in a range of 45 classes). They hold this registration in a number of countries. The granting of the registration was (and remains) controversial because the windowing system was in existence long before Microsoft was created and is far from unique to them. In 2001 Microsoft began a legal campaign against a company offering an operating system called Lindows. Microsoft argued that this name was too close to that of Windows. Their claim was upheld in some countries, such as the Netherlands. It met, however, with resistance in the U.S. with Lindows claiming that Windows (in a computing context) was a generic word and that therefore Microsoft’s registration was invalid. Ultimately the U.S. case was settled out of court with Microsoft paying Lindows US$20 Million to change its name to Linspire and to hand over certain of its assets (mainly internet domain names relating to the term Lindows).
- It must be actively used in commerce.
Trademarks are registered on a “use them or lose them” basis. They therefore have to be renewed periodically.
- The owner of the trademark must pay the necessary fees.
- In some countries a registered trademark must be identified in some way when it is used.
What is the actual practical significance of a registered trademark?
In practical terms the aim of using a trademark is to allow for clear identification of the origin of goods and/or services and thereby to prevent confusion amongst (potential) customers. Although the Protected Geographical Status awarded to food products is distinct from trademark registration, it illustrates the principle behind it. Anybody in the UK (or elsewhere) can make and sell pork pies (subject to them following the relevant laws regarding food hygiene etc.) but only pork pies which are actually made in Melton Mowbray can actually, legally, be described as Melton Mowbray pork pies. This legal recognition was granted in 2004 after a campaign by producers in the area, who were upset at the fact that the renowned excellence of their product was being commandeered by producers without any connection to the area and without there being any guarantee that the product was of the quality consumers were expecting based on the name. They felt that this could potentially devalue the genuine Melton Mowbray pork pies. The awarding of PG status to the Melton Mowbray pork pie means that its producers can now invest their time, energy and money in the production, development and marketing of their product without having to worry about their efforts being exploited by people who may be making inferior products. This is essentially the practical purpose served by a trademark. So in short, the more effort you plan to expend on marketing your product or service, the more seriously you should think about using a registered trademark to stop other people taking advantage of your hard work.