The purpose of a trade mark is to distinguish the goods or services of one trader from those of another. Trade marks allow the public to identify, without confusion, goods or services which originate from a particular person or company. They are valuable assets and care should be taken in the way they are used to ensure that they maintain their validity and, by extension, value.

Trade marks owners should ensure that they use their trade marks correctly. First and foremost, a trade mark should not be used as the generic name of the product on which it is appears. Rather, it should be an adjective which is used to describe the product, for example DULUX paint, NIKE trainers, ROLEX watches.

If a registered trade mark is allowed by its owner to become a generic term, it can lose its registered status. Words which are now generic terms in everyday use but which were originally registered trade marks include ‘escalator’, ‘linoleum’, and ‘gramophone’.

When including trade marks on a website, in marketing materials, or product literature, it is advisable for trade mark owners to identify them by using upper case lettering, bold font, italics, a different font type, or quotation marks. Use of the symbol ® next to registered trade marks, and ™ next to registered or unregistered trade marks, is also recommended. Such measures ensure that the public immediately recognise particular words as trade marks.

Crucially, trade mark owners should ensure that they are using their registered trade mark for the relevant goods/services, and in the correct territory/territories.  If a trade mark owner holds a UK trade mark registration (‘UKTM’), for example, but does not do business in the UK, that registration could become vulnerable to cancellation for non-use (meaning it would be removed from the Register).  In addition, even if a trade mark owner is doing business in the UK, if that business concerns a different trade mark or different goods/services to those covered by their UKTM, this could still risk jeopardising the validity of the trade mark registration.  It is therefore important that trade mark owners continue to review their trade mark portfolio to ensure that it accurately reflects their current business activities, and to seek advice from a Chartered Trade Mark Attorney if it does not.

In addition to ensuring that they use their trade marks correctly, trade mark owners should also monitor use and registration of their trade marks by third parties, such as by setting up watching services or search engine alerts, and take action if they become aware of misuse.

Please get in touch with one of our Chartered Trade Mark Attorneys if you require more information.