Registered trade marks meaning

Consider the nature of the IP right From a lender’s standpoint, use this checklist to pinpoint key points when taking IP as security and the steps to implement it... Identify the IP right and applicable law; patents, trade marks, registered designs and copyright can be mortgaged or charged... Select security: a legal mortgage (assignment plus redemption and exclusive licence‑back) offers stronger control than a fixed charge; for charges, restrict disposals and hold an executed undated assignment in escrow (verify foreign recognition)... Confirm ownership, term, existing security, licences and third‑party interests; demand warranties and title evidence, especially for unregistered rights... Assess validity and maintenance: search prior rights, check renewals and genuine use, monitor infringement, review litigation; obtain professional opinions where needed... Value the right and routes on default (licensing or sale); add complementary assets if required... Cover associated rights and materials: unregistered marks/goodwill (only with the business), unregistered designs, database right, know‑how/confidential information, domain names, and software/source code with escrow... Register...

Applying for a website blocking order This Checklist summarises the key matters to consider when seeking a website blocking order (WBO). A WBO can be a practical option for rights holders where a site has been identified that infringes copyright, registered trade marks or other rights, but the website owner/operator cannot be identified and/or is outside the jurisdiction. WBOs provide notable flexibility: if the site owner/operator tries to evade the blocks applied by internet service providers (ISPs), the ISP can be notified and the measures adjusted to address that attempt without needing a further court order. No prior finding of infringement against the website owner/operator is required. The owner/operator also does not need to be joined as a party to the proceedings. For additional guidance, use this Checklist alongside Practice Note: Website blocking orders. The third column can be used to record observations or comments as the Checklist is worked through. Checklist — Further information — Notes (if any) Considerations before applying Consider whether the...

It is vital for proprietors of trade mark registrations to ensure correct use, so the public recognises them as badges of origin for the relevant goods and/or services, and to lessen the risk of third-party challenges claiming the marks have become generic or misleading, or that they lack distinctiveness. For more information, see: Trade mark transactions and management-overview Practice Note: Managing a trade mark portfolio Practice Note: Removal of UK trade marks from the register-expiry, surrender, invalidity and revocation To assist, clear guidelines on trade mark usage should be created, with training provided to internal teams and to third-party users of trade marks such as distributors, advertising agencies and retailers, covering correct usage. A checklist of points to include in such guidance is set out below. Only use the trade mark as registered, without variations and abbreviations This applies to both written and spoken use of the trade mark. Distinguish the trade mark from the surrounding text A...

In this issue: Trade marks/passing off Copyright & associated rights Daily and weekly news alerts New and updated content Dates for your diary Trackers Useful information Trade marks/passing off Court of Appeal confirms ‘SHORTSTV’ trade mark is invalid (Shorts International Ltd v Google LLC) The Court of Appeal, in Shorts International Ltd v Google LLC [2026] EWCA Civ 668, upheld the earlier ruling and dismissed Shorts International Ltd’s (SIL’s) appeal, confirming that Google’s use of ‘Shorts’ did not infringe SIL’s registered trade marks and that one of its registrations was invalid. SIL, a producer and distributor of short films aired on its ‘ShortsTV’ channel, contended that Google’s deployment of ‘Shorts’ for its YouTube Shorts service infringed its five registered trade marks under section 10(2) and 10(3) of the Trade Marks Act 1994 (TMA 1994) and amounted to passing off. The judge determined that four of SIL’s marks remained valid owing to modest figurative elements that imparted...

Oatly AB v Dairy UK Ltd [2023] EWHC 3204 (Ch) What was the background? In November 2019, Oatly AB (‘Oatly’) lodged an application for the word trade mark POST MILK GENERATION for goods in classes 29, 30 and 32, namely oat-based products. During examination, the IPO found the mark to be inherently registrable, considering it distinctive rather than descriptive. After registration, Dairy UK filed for a declaration of invalidity, including under TMA 1994, s 3(4). That provision prevents registration where use is prohibited by law, in this instance Article 78(2) and Part III of Annex VII of Regulation (EU) 1308/2013 (the EU Regulation), which provides that the term ‘milk’ cannot be used as ‘definitions, designations or sales descriptions’ for products that are not mammary secretions. The Hearing Officer upheld the objection, taking the view that the EU Regulation is aimed at capturing the marketing of non-dairy products and concluding that, because the trade mark features the word ‘milk’ and is registered for non-dairy goods, it fell foul of the...

In this issue: Trade marks/passing off Patents IP and AI Daily and weekly news alerts New and updated content Dates for your diary Trackers Useful information Trade marks/passing off Court of Appeal upholds validity of trade mark in counterclaim for invalid registration (Babek v Iceland Foods) In Babek International Ltd v Iceland Foods Ltd, the Court of Appeal (Civil Division) rejected Iceland’s appeal from the Intellectual Property Enterprise Court, which had refused Iceland’s counterclaim seeking a declaration that UK Registered trade mark No 00907527963, owned by Babek, had been invalidly registered. The sign at issue was a gold and black figurative mark. The appellate court examined compliance with the three distinct, cumulative criteria for registrability: it must be a sign; the sign must be capable of graphical representation; and it must be capable of distinguishing the goods or services of one undertaking from those of others. Although the judge at first instance wrongly applied a...

For many companies, intellectual property rights (IPRs) constitute an increasingly important and significant asset class. Although contemporary technology firms, pharmaceutical businesses and industrial players are most closely and very commonly linked with holding portfolios rich in IPRs, even the least likely organisations may own rights that are fundamental to them and, without which, they simply could not operate (or do so as effectively or profitably) or would suffer significant loss of value. As a broad category, IPRs are wide-ranging and inherently diverse indeed. According to context, there are, in particular, rights beyond the best known (patents, trade marks and copyright) that may—or may not—be generally regarded strictly as IPRs, such as database rights, websites with their associated domain names, goodwill and contractual rights allied to IPRs. For further detail on the principal types of intellectual property rights an insolvency practitioner as office holder may encounter, see Practice Note: IP right comparison table. Patents, design rights and trade marks depend for their existence and protection on registration (at the...

Lookalike products and dupes are, by their nature, difficult for brand owners to deal with. They are designed to imitate, or to evoke, a famous or trending product, yet frequently avoid any clear branding cues for which the brand owner might hold registered rights. For example, a lookalike might mirror entirely the colour palette, overall appearance and tactile feel of the packaging of a renowned product, while adopting a different trade mark to sidestep liability. The difficulty in policing such products arises because, under UK law, there is no single, dedicated IP right tailored to address them. Instead, brand owners typically must piece together a mosaic of protections—copyright, passing off, and trade mark and design infringement—to prove the components of a claim against a copycat item. Makers and designers of lookalikes and dupes are, moreover, commonly sophisticated. They take care to steer clear of obvious trade marked brand names, choosing rather to reproduce more commonplace or generic features such as the overall design, visual impression and feel of a...

A trade mark is a badge of origin that distinguishes the goods or services of one undertaking from those of another An EU trade mark (EUTM) delivers unitary protection via one registration that spans every EU Member State. You obtain an EUTM by filing a single trade mark application at the EU Intellectual Property Office (EUIPO) in Alicante, Spain. For fuller detail on EUTMs, see Practice Note: EU trade marks (EUTMs), and for the legislation that underpins the regime, see Practice Note: EU trade marks—legislation. Registration alone does not secure everlasting rights. The owner must preserve the registration by renewing on time, keeping the mark in genuine use, preventing it from becoming generic, and enforcing it against infringing use by third parties. Once registered, a trade mark is valid for an initial term—ten years for EUTMs—and, in principle, can be renewed without limit. A mark can also be taken off the register, either voluntarily or following action by a third party or the Registrar. This Practice...

This Agreement is entered into on [ insert date ] Parties [ insert name ], a company incorporated in [ England and Wales ] with number [ insert company number ] and having its registered office at [ insert address ] (Licensor); and [ insert name ], a company incorporated in [ England and Wales ] with number [ insert company number ], whose registered office is at [ insert address ] (Licensee). Each of the Licensor and the Licensee is a party, and together the Licensor and the Licensee are the parties. BACKGROUND (A) The Licensor [ is the [ registered ] proprietor of OR is the applicant to register OR has the right to licence and/or sub-licence ] certain intellectual property rights. (B) The Licensee is [ insert background to licence/relevant transaction ]. (C) The Licensor has agreed to grant a licence of those intellectual property rights to the Licensee, and the Licensee has...

[ Postal address for internet service provider/host online platform ] [ Date ] Sent via registered post and email: [ email address for internet service provider/host online platform ] Dear [ insert organisation name ] Notice and take-down letter—trade mark infringement on [ website URL ] We act for [ name of client ] of [ client’s address ] (our Client) in connection with the enforcement of intellectual property rights. [ This correspondence relates to the website accessible at [ website URL ] (the Website). OR This correspondence concerns content available on your platform at [ website URL ] (the Website). ] The Website is directed at consumers in the UK...

This Licence is entered into on [ insert date ] (the Commencement Date): Parties [ insert licensor name ], a company incorporated in [ England and Wales ] under number [ insert company number ], whose registered office is at [ insert address ] (the Licensor); and [ insert licensee name ], a company incorporated in [ England and Wales ] under number [ insert company number ], whose registered office is at [ insert address ] (the Licensee), (each of the Licensor and the Licensee being a party and, together, the Licensor and the Licensee are the parties). Background (A) [ Explain the relationship between the Licensor and the Licensee. ] (B) [ The Licensor has entered into an agreement with the Licensee [ dated [ insert date ] ] (the Main Agreement) for [ insert other description of relevant transaction (referencing any relevant related agreements) ] (‘ Transaction ’). ] (C) The Licensor has agreed to...

In this Q&A we focus on the amendments introduced by Regulation (EU) 2015/2424 (subsequently consolidated in Regulation (EU) 2017/1001, the EU Trade Mark Regulation (EUTM Regulation)), along with the key points to consider when seeking protection for an unconventional mark. EU Trade Mark Regulation—What is new? See News Analysis: New EU trade mark reforms, which provides an analysis of the background to the new EU trade mark reforms. As outlined there, five new categories of trade mark can be applied for in the EU: Position Pattern Motion Multimedia Hologram These are in addition to a Certification Mark, which has been available in the UK for some time. The European Union Intellectual Property Office (EUIPO) has issued guidance relating to the new EU trade mark reforms...