Differences Between Registered and Unregistered Trade Marks in England

If you run a business in the UK, you will likely have a business name and logo. You may have other elements associated with your brand, such as the colours that you use. Therefore, you will likely wish to trade mark an aspect of your business. This article will explain the differences between registered and unregistered trade mark in the UK. 

Registered Trade Marks

You can register your business’ trade mark in the UK Intellectual Property Office (IPO). The mark you want to register can be a:

• word;
• sound;
• logo;
• colour; or
• a combination of these things. 

However, the brand element or business name must not be too similar to an existing registered trade mark. Also, it cannot be:

•  offensive;
•  misleading; or
• descriptive of the goods you sell or the services you provide.

Trade marks do not apply across all possible goods and services. Instead, when you make trade mark applications, you must indicate which classes of goods or services the trade marks apply. There are 45 classes, and you can search the different classes easily to decide which are appropriate for your trade mark. There is no limit to the number of classes you can register your trade mark in. However, you must only register the mark in the services related to your business or the products or services you sell now or hope to within the next five years.

You can show that you have registered your trade mark by using the ‘Ⓡ’ symbol on your trade mark. This shows others they should not use your trade mark without your permission.

Once you have successfully obtained your registered trade mark, it lasts for ten years and is renewable every ten years, so you can potentially retain your registered trade mark indefinitely. A trade mark owner has the exclusive right to use that trade mark for as long as it is registered. 

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Unregistered Trade Marks

An unregistered trade mark is a trade mark that is recognisable as such but is not registered through the Intellectual Property Office. If you want to rely on an unregistered trade mark, you need to show the following:

• proof that that mark is yours;
• that you have established a reputation associated with that mark (i.e. that customers and potential customers associate that particular brand with your company); and 
• that someone else is using that mark which is causing harm to your business.

For example, the most well-known case in Britain over an unregistered trade mark was the 1990 ‘Jif Lemon’ case (Reckitt & Colman Products Limited v Borden Inc). This involved the packaging of Reckitt & Colman’s Lemon Juice product, which they sold in distinctive lemon-shaped and coloured packaging. It was a very well-known product in British households then. A competitor, Borden, started selling their own lemon juice in similar shaped and coloured packaging. However, Reckitt & Colman successfully showed that Bordon had infringed their unregistered trade mark in their Jif Lemon product.

Enforcing Unregistered Trade Marks

The law of passing off enforces unregistered trade marks. Passing off is a legal concept where someone else financially benefits from another company’s reputation or goodwill. To successfully claim passing off for the unauthorised use of an unregistered trade mark, you need to show the following:

• that you have established goodwill in that mark, i.e. that you ‘own’ it, and that the general public associates that particular trade mark with your company;
• actual or likely misrepresentation, i.e. that the infringer has intended that the public believe it is your business they are dealing with; and
• actual or likely damage to your business reputation or goodwill, or financial loss to your business (for example, through lost sales).

It is much more difficult to prove the infringement of an unregistered trade mark through passing off than to prove the infringement of a registered trade mark. This is because the onus is on you to verify that your case meets the above three criteria. Establishing your business reputation and the goodwill you have built up over the time your business has been trading can be tricky. A defendant in a passing off claim also has several defences they can rely on, including that they are using the mark honestly or that your trade mark is not distinctive enough to be considered exclusive to your company.

Enforcing Registered Trade Marks

It is much easier to take legal action for the unauthorised use of a registered trade mark than for an unregistered trade mark. This is because you have clear evidence of your exclusive right to use that trade mark and can prove that you own the registered trade mark.  

If you discover someone is using your trade mark without your permission, it is vital to seek legal advice. Remedies for successful trade mark infringement claims vary from simply being able to stop the infringer from using your trade mark to being awarded damages for loss of profits and destruction of any goods that infringe your trade mark.

Key Benefits of Registering a Trade Mark

The obvious benefits of registering your trade mark are that:

• it is much easier and cheaper to enforce a registered trade mark than an unregistered one;  
• it is relatively easy and inexpensive to register a trade mark and keep it renewed every ten years; and 
• a registered trade mark can be a valuable business asset as you can licence the right to use it or sell it, just like any other asset in your business.

Key Takeaways

You can choose whether or not to register your trade mark. However, registering your trade mark makes it much easier for you to take action if somebody else infringes on it. It is also a valuable intellectual property asset in its own right. To rely on your right to use an unregistered trade mark, you must show that you have acquired goodwill and a reputation for your business associated with that particular trade mark. You also need to show that the public associates your business with the trade mark. This is not easy to prove, whereas for a registered trade mark you just need to show that it is registered.  

If you need help deciding whether to file for a registered trade mark for your business brand, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.

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