Words is a growing collection of contributed articles,
by an impressive assortment of experts, gurus and
ad biggies, that are germane to our subject.
|SHOULD WE CALL YOU NOW?
is the professional body for trade-mark
attorneys in the United Kingdom. Established
in 1934, it plays a significant role in
promoting the importance of registering
trade marks -- extending the protection
offered by registration and increasing
the benefits it brings.
For further information check out the
ITMA website at www.itma.org.uk
which includes a full list of registered
trade mark attorneys in the UK under the
button TM-ATTORNEYS. Alternatively write
to ITMA at Canterbury House, Sydenham
Road, Croydon, Surrey, CR0 9XE Tel: 44-208
of the UK
you have an article that
belongs in Wise Words, contact
Timothy R V Foster in London
on 44 (0)208 763 2225
or fax him on 44 (0) 208 763 2011
'Just Do It',
'Beanz Meanz Heinz', 'It's the Real Thing'. All slogans
that come readily to mind when you think of the major corporations
and their tag lines. What you might not realise, however,
is that they are all registered trade marks and, as such,
could easily be followed by the symbol ®.
The Institute of Trade Mark Attorneys (ITMA)
sets out in this article to answer a few of the most commonly
asked questions about trade marks and we begin by answering
the question of why those companies above bothered to register
Well, the answer is really quite simple. Once registered,
trade marks cannot be used by anyone else for the same goods
or services for which the trade mark is registered. If they
are, then the companies can take immediate action to prevent
further abuse and, indeed, can seek compensation for any
damage to their reputation.
If the slogans
are not registered, then the legal processes are much more
tortuous, costly and less certain of succeeding.
Many companies do not bother to use the ® symbol where
slogans are concerned. However, you are likely to see it
against brand names that have been registered e.g. 'PENGUIN'
for biscuits, 'MARS' for chocolates or 'CHANEL' for perfume.
Only those trade marks that have been registered can show
the ®. It is illegal to show the ® symbol if the
mark is not registered.
Many trade marks are accompanied by the symbol À. This is
acceptable even if the mark has not been registered. In
many cases it is used by companies to denote an application
for registration is in progress, or it can help to establish
registration by usage. Anyone can use the À mark.
if you are using a trade mark owned or registered by someone
else you may well be infringing their rights. It is always
worth checking that no-one else is using your preferred
mark before entering the marketplace. You can do this by
consulting a trade mark attorney; more about which follows
later in this article.
To conclude on the various symbols that may accompany a
trade mark. Occasionally, the SM symbol appears against
a trade mark. This denotes Service Mark. In 1986, in the
UK, trade marks became applicable to services as well as
goods; previously only goods could carry registered trade
its introduction a lot of companies providing services used
the SM symbol, but that has, more or less, fallen into disuse
as the À and ® symbols have become generally recognisable
as indicating trade marks for all goods and services.
So, apart from attaching a symbol to denote your trade mark
is registered, what other advice can the Institute of Trade
Mark Attorneys offer the advertising executive about slogans?
In order to register your slogan as a trade mark and prevent
others from using it, the phrase must be distinctive and
capable of distinguishing your goods or services from a
|Need to be Unique & Non-Descriptive
If your slogan
is purely descriptive, it is highly unlikely that you would
be able to register it as a trade mark; at least not as
a simple slogan on its own. Similarly, if your slogan is
not distinctive, differentiating your goods or services
from others, then that too would be unlikely to be able
to be registered. This is the reason why so many companies
can use slogans such as 'Simply the best' or 'The natural
choice', as they do, without infringing others' trade marks.
What advertising creatives need to come up with are slogans
that are unique and non-descriptive. That way, the slogan
can be registered as a trade mark and others will be prevented
from using it or, if they do, they would be liable to infringement
The final piece of advice, already referred to above, is
that you should consider using the services of a registered
trade-mark attorney and, preferably one that is a member
of the Institute of Trade Mark Attorneys. By using one of
ITMA's members, you are assured of getting top professional
advice from qualified registered trade-mark attorneys who
have undergone rigorous training and examination.
They will conduct
all searches to ensure no-one else has already registered
the slogan or other trade mark, or something confusingly
similar. They will make the application to cover the geographical
territories and classes of goods or services for which you
seek protection and handle all queries. They can renew your
registration (every ten years) and can act for you in ensuring
no-one else infringes your mark and, if they do, take the
necessary action to prevent further abuse.
AdSlogans.com -- Wise