Unconventional trade marks
Unconventional trade marks

The following IP practice note provides comprehensive and up to date legal information covering:

  • Unconventional trade marks
  • Brexit
  • What can constitute a trade mark?
  • Which signs are capable of appropriate representation?
  • Is a sign capable of distinguishing?
  • Obstacles most likely to be problematic for unconventional trade marks
  • Shape
  • Sound
  • Colour
  • Smell, taste and texture
  • More...

Originally authored by James Whymark, updated by Rachel Wilkinson-Duffy and Birgit Clark of Baker & McKenzie LLP, London

A UK trade mark is defined by section 1 of the Trade Marks Act 1994 (TMA 1994) as:

‘…any signs, in particular words, including personal names, or designs, letters, numerals, colours, the shape of goods or of the packaging of goods, or sounds, provided that such signs are capable:

  1. of being represented in the register in a manner which enables the registrar and other competent authorities and the public to determine the clear and precise subject matter of the protection afforded to the proprietor, and

  2. of distinguishing goods or services of one undertaking from those of other undertakings’

TMA 1994, s 1 further specifies that a trade mark may, in particular, consist of words (including personal names), designs, letters, numerals, colours, sounds or the shape of goods or their packaging.

The definition in TMA 1994, s 1 is derived from Article 3 of Directive (EU) 2015/2436, which was implemented into UK law on 14 January 2019 by the Trade Marks Regulations 2018, SI 2018/825. Previously, it had been necessary for a trade mark to be capable of being ‘represented graphically’ on the register, but the amended position has given trade mark proprietors greater flexibility to make use of a variety of forms of representation, including sound and video files.

The amendment

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