Correct Use of Registered Trade Marks
A registered trade mark can, in theory, remain on the register of trade marks indefinitely, provided that the renewal fees are paid. However, registered marks can be vulnerable to cancellation if their use is not controlled by the proprietor. For example, the words “Tannoy”, “Linoleum”, “Bubble Wrap” and “Jet Ski” were (or are) all registered trade marks, but became generic – being used as a name for the product in question rather than indicating the source or origin of the product, and so are no longer enforceable. We provide below our “Dos and Dont’s” on correct usage of registered trade masks, to help prevent your registration from suffering a similar fate …
1. DON’T user your trade mark in possessive or plural forms, or as a noun or a verb.
2. DO use the trade mark in the form registered, and in respect of the goods/services for which it is registered. Failure to do so may leave the registration liable to cancellation on the ground of non-use.
3. DON’T allow third parties to use your registered trade mark without challenge, unless such use is “in accordance with honest practices” in the trade. Similarly, don’t use the registered trade marks of others, unless in accordance with honest practices.
4. DO use your registered trade mark as an adjective qualifying the name of a product or service. For example, say “WELLINGTON® Cognac is the UK’s leading cognac” rather than “WELLINGTON’s is the UK’s leading cognac”.
5. DON’T allow your registrations to get “out of sync” with the trade marks you actually use. If the look of your logo or other branding undergoes a “refresh”, consider if you need to apply for registration of the refreshed marks.
6. DO indicate that your mark is registered – use ® or the letters “RTM” where possible, and try to distinguish your registered trade mark from the adjacent text (e.g. by using a different font size, style or colour).
7. DON’T indicate or suggest that your mark is a registered mark if it isn’t: you might be committing a criminal offence! If the mark is not registered, you could use the letters “TM” instead.
We hope this advice is helpful, but if you have any questions please get in touch with your regular contact at Nash Matthews LLP.