It can also be the way a product is presented and packaged, such as Kodak film or Cadbury’s chocolate. Trade marks can be shapes, such as the Rolls Royce radiator grille, the Toblerone chocolate bar, or the classic Mini automobile. They can also be advertising or store designs.
Product & commercial get-up and design of this kind can be protected by trade mark registration when used as a badge of commercial origin or to brand or endorse products and/or services of whatever kind, that is to say it is recognised as a trade mark.
Trade mark registration is often the only effective means of obtaining protection and controlling unauthorised use or imitation by others, since:-
- Action against piracy is faster and more persuasive when based on trade mark registration, as effective rights are already in place, and formal litigation may even be avoided as a result;
- Whilst legal action for passing off based on prior use of a trade mark is a possible alternative, this is generally more costly and uncertain.
- Owning a prior trade mark registration or application makes it easier and cheaper to oppose someone else’s application for the same or similar mark, and more likely to be successful;
- It can be an obstacle to anybody registering the same or similar mark in countries such as the UK, USA, Japan and Australia where it would be officially cited against later applications that conflict;
- It has a deterrent effect and can be publicised by use of e.g. ®, which may prevent unauthorised use or imitation in the first place.
Copyright can be valuable, but it only protects against deliberate copying and not coincidental similarity. Proving ownership of copyright also tends to be more difficult and expensive than relying on trade mark registration. Registered design is also valuable but limited in duration.
Trade mark registration not only provides the protection necessary to safeguard product and commercial get-up. It is also an enabler of product licensing, and consequently helps in improving the generation of revenue. It can additionally assist in raising funds through e.g. securitisation, or help to support the sale of a business.
If a company does not seek trade mark registration at an early enough date, there is a danger that prior registration by someone else could prevent it expanding its business or that its marketing might even be halted altogether.
