It is cheaper and easier to enforce a registered trade mark than to protect an unregistered mark using the common law remedy of 'passing off'. To be eligible for registration, a trade mark must, among other things, be distinctive.
Marks that identify or describe a product or service, or that are in common use, generally cannot be registered as trade marks. They must remain in the public domain for use by anyone. For example, health and social care charities can't generally register terms such as 'care'.
Another example might be a name such as 'Centre for Accessible Environments'. Such names cannot generally be registered and the UK Intellectual Property Office can object to any such application on absolute grounds. One way to overcome such objections is to demonstrate 'acquired distinctiveness'.
The UK Intellectual Property Office will allow a descriptive mark to be registered if the charity concerned can show that the mark has become distinctive because of the way in which it has been used. This usually involves providing evidence of use for a period of about five years. Evidence can include details of advertising and promotional expenditure, examples of promotional material and, where relevant, sales figures. It can be hard for charities to collate evidence because the value of their work is difficult to quantify.
Names that are inherently distinctive are the easiest to register as trade marks. They possess the strongest distinctive character and do not require evidence of use to establish acquired distinctiveness.
Marks are often divided into the following categories: fanciful (trade marks made up of fictional words); arbitary, which use common words in meaningless contexts - for example, an arts charity called Conker; suggestive, evoking the characteristic of a product without describing it (for example, Jaguar cars); descriptive - dictionary meanings used in connection with products or services directly related to that meaning (although these can be registered only in limited circumstances); and generic - common words (such as 'care') that are used in connection with an organisation's products or services. Generic words are not registrable.
- Shivaji Shiva is a partner in the charity team at Russell-Cooke Solicitors.