Chapter CG68220
| Published date | 12 March 2016 |
| Record Number | CG68220 |
| Court | HM Revenue & Customs |
| Issuer | HM Revenue & Customs |
The term “trade mark” refers to the name or other symbol used to identify the goods produced by a particular manufacturer or distributed by a particular dealer that distinguishes them from products associated with competing manufacturers or dealers. It is defined in S1 (1) Trade Marks Act 1994 in the following terms:
any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.
A trade mark cannot be registered unless and until the holder makes a successful application under the provisions of the Trade Marks Act 1994. Following registration a trade mark will revert to its unregistered status if it is not renewed at the end of the initial registration period. This is explained in more detail below.
The commercial advantage in owning a registered trade mark is that registration gives a monopoly right to the holder in the use of the trade mark for the classes of goods for which it is registered. Where a third party uses a trade mark on the classes of goods for which it is registered without the owner’s permission the holder will be able to seek legal redress by means of an action for infringement. It is therefore relatively easy, fast and inexpensive to take action to protect a registered trade mark.
Registered trade marks are assets for CG purposes within the meaning of TCGA92/S21 (1) as the rights attached to them are a form of property. This is reflected in TCGA92/S275 where a distinction is made between goodwill and other forms of intellectual property including registered trade marks. S24 of the Trade Marks Act 1994 draws a similar distinction by providing that a registered trade mark can be transferred either in connection with the goodwill of a business or independently of it.
Registered trade marks come into existence on the date on which application for registration is made.
Registration of a trade mark in the UK lasts for a specified period depending on when the trade mark was registered. The Trade Marks Act 1994 provides for registration for a 10 year period after which time registration may be renewed every 10 years subject to the payment of renewal fees.
There is no direct judicial authority on whether a renewal operates to extend an existing registration or whether it creates a new one. However, you...
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