Freelance designers and brand consultants need to know the basics of trade mark law to advise their clients on the steps that should be taken to protect their intellectual property (IP), writes Mark Kingsley-Williams, founder of Trade Mark Direct, an online trade mark registration company. Following these four steps, or posing the following questions, will help ensure trade mark compliance:
1. Will the name or logo comply with the trade mark act?
If the name is not ‘distinctive’ and is merely descriptive of the goods or services it won’t be accepted as a word mark. Adding distinctive graphical elements can overcome this, but the graphics must not just describe the goods.
For instance ‘glamorous lashes’ would be rejected if applied for as a trade mark to cover false lashes. Adding a graphic that looked like lashes would be descriptive also, so that could not be registered either. But adding something distinctive, that is not connected to lashes, such as a big tiara, would be distinctive.
2. How big do the graphical elements need to be, relative to the text?
This comes up a lot for freelancers, particularly when a designer wants to add something subtle and sophisticated to an otherwise descriptive name. To be on the safe side, we recommend the same relative proportions are used as between the Nike ‘swoosh’ and the word Nike®. You can go smaller with the graphics but the risk of rejection is greater. This could then lead to loss of registry and legal fees for the client, as well as delays in product launches.
3. Is it too similar to a registered mark? Or does a company, with an unregistered logo have rights under Common Law?
Make sure that there is not a similar symbol or phrase already trademarked or in widespread use. To do this, you can search the Intellectual Property Office’s database. This can be time-consuming, but it is essential to ensure that you are not inadvertently taking someone else’s trademark.
Recently, a local Essex restaurant was forced to change its signage after a complaint by Harrods department store, which argued that the signage bore too close a resemblance to its own logo. “This could wrongly suggest some association between our organisations,” Harrods said at the time. The cost to restaurant owner Nigel Holland was in the region of £10,000.
4. How similar is too similar? The ‘moron in a hurry’ test
The legal test is whether consumers, not paying much attention, are likely to be confused between any two names or logos. Or as one judge memorably put it: ‘A moron in a hurry..’’. If a moron in a hurry would be confused between two names or logos then there is a problem.