Quick Trademark query?

Discussion in 'Legal' started by JPMiddleton, Feb 2, 2015.

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  1. JPMiddleton

    JPMiddleton UKBF Regular Free Member

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    We've previously registered a trademark within class 28 (playing cards) and plan to display it as follows on packaging and our site; Obviously example is a placeholder.

    EXAMPLE™ Playing Cards (on the site)
    EXAMPLE™ (on the packaging)

    Am i right in thinking we would need to register both EXAMPLE and EXAMPLE Playing Cards to do this? Thanks in advance.
     
    Posted: Feb 2, 2015 By: JPMiddleton Member since: Aug 18, 2011
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  2. PipeTen-Carl

    PipeTen-Carl UKBF Regular Full Member

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    You'd hope just EXAMPLE™as the "Playing Cards" is implied by the categorisation, but I don't actually know :)
     
    Posted: Feb 2, 2015 By: PipeTen-Carl Member since: Mar 6, 2010
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  3. F_B

    F_B Guest

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    You do not need to register your mark in the form of "EXAMPLE™ Playing cards" to receive the benefit of protection from your registration.

    Trade mark registrations protect signs and symbols that denote one entity's undertakings from that of another. As such descriptive terms are not eligible for registration. For example you cannot register "Playing cards" alone as the term is descriptive of the product (cards in this instance). The term should be free for everyone to use.

    EXAMPLE™ Playing Cards probably would be registrable, as it contains the distinctive element "EXAMPLE". However, as you already have "EXAMPLE" registered there wouldn't be much benefit.

    A couple of asides:

    By merely using your mark you are building goodwill in your name. Your goodwill can be protected under the law of "Passing off" where if anyone produces goods under a name which is identical or confusingly similar to your mark you can seek redress.

    Goodwill is built up even in unregistered marks. However, it is easier to prove registered trademark infringement than it is to prove passing off.

    vs ®
    can be used on any mark intended to be a trademark. That mark does not have the be registered. Some companies may use to attempt to "educate the public" that their borderline descriptive mark is distinctive and then try to get it registered.

    ® denotes the mark is a Registered trademark and can only be used with registered marks.

    The particulars of your situation may affect your position. If you're any way in doubt then seek advice from a professional, otherwise I hope that's helpful and not too "legalese".
     
    Last edited by a moderator: Feb 4, 2015
    Posted: Feb 4, 2015 By: F_B Member since: Jan 1, 1970
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  4. JPMiddleton

    JPMiddleton UKBF Regular Free Member

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    So one last question, if EXAMPLE playing cardstm was registered, would it be ok to say EXAMPLEtm on the packaging? And EXAMPLEtm Playing Cards when mentioning the brand? Even though technically it's "EXAMPLE Playing Cardstm"

    Hope that makes sense, thank you for your reply!
     
    Posted: Feb 15, 2015 By: JPMiddleton Member since: Aug 18, 2011
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  5. F_B

    F_B Guest

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    If you have EXAMPLE® you can use it on its own or together with Playing cards. In fact you must use your registration. After 5 years of non use a third party will be able to apply to have the registration revoked.

    It does not matter if you use it as EXAMPLE on its own or with another element such as EXAMPLE playing cards.

    "Playing cards" is descriptive of the goods and will probably be disregarded as a non-distinctive element of your name.

    If you register the word EXAMPLE only and not as a figure, the protection afforded by the registration will be very broad. In other words it will not matter how the text EXAMPLE appears (font, colours, as part of a logo etc). The word EXAMPLE in each variation will be covered by your single registration.
     
    Posted: Feb 16, 2015 By: F_B Member since: Jan 1, 1970
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