Back to Basics: Trade marks in the creative industries
For businesses and creators across the entertainment and creative sectors, trade marks are one of the most commercially important intellectual property rights — and, all too often, one of the most underutilised.
A trade mark, as defined in the UK Trade Marks Act 1994 (TMA 1994), is a sign capable of being represented in the register in a manner which enables the registrar and other competent authorities to determine the clear and precise subject matter of the protection afforded to its proprietor, and which is capable of distinguishing the goods or services of one undertaking from those of others. In practice, trade marks most commonly take the form of names, logos, slogans, and stylised titles; sounds, shapes, and colours can, in certain circumstances, also be registered.
Why trade marks matter in the creative sector
Copyright protects (in the UK) the specific expression of a work automatically, from the moment of creation and without registration. Trade marks serve a complementary but different function: they protect the identifiers that signal the commercial origin of goods and services to consumers. A band name, a production company's logo, a gaming studio's brand, the title of a television series, a podcaster's channel name — all of these are potential trade marks, and all are potentially registrable and enforceable assets.
The distinction between copyright and trade mark protection is worth appreciating. Copyright in a logo subsists automatically and protects the specific artistic work; but it does not protect the name itself as a badge of origin. Trade mark registration, by contrast, can give the owner the exclusive right to use a name or sign in relation to specified goods or services, regardless of whether any copyright exists in the mark, and who owns it.
Registration and the UKIPO
Trade marks in the United Kingdom are registered by the UK Intellectual Property Office (UKIPO). Registration is not mandatory (protection may be available through the common law tort of passing off without registration) but it confers considerably stronger and more commercially useful rights, including the ability to bring statutory infringement proceedings and to enforce rights without needing to prove goodwill and reputation from first principles.
The TMA 1994 specifies absolute and relative grounds on which a mark may be refused registration, including marks devoid of distinctive character, those which consist exclusively of signs describing the characteristics of the goods or services, or which have become generic. A mark must do more than describe the product; it must function as a distinctive identifier of commercial origin.
On registration, a UK trade mark provides protection for ten years, renewable indefinitely. The mark must be registered in the relevant classes under the Nice Classification system. For creative industry businesses, relevant classes will typically include Class 41 (certain entertainment and creative services, film and television production), Class 9 (recorded media and digital content), Class 16 (publications and printed matter), and Class 25 (clothing and merchandise), among others. Choosing the right classes, and the right specification within them, is an important part of the registration strategy.
Following Brexit, European Union Trade Marks (EUTMs) no longer provide protection in the United Kingdom. UK businesses with existing EUTMs, or seeking EU-wide protection, should ensure they hold both a UK trade mark and an EUTM registered separately at the European Union Intellectual Property Office (EUIPO).
Can a film or television title be registered?
This is a common and important question. The answer is nuanced. Generally, the title of a single work — a one-off film, for example — may be difficult to register, because it may lack the distinctive character needed to function as a trade mark rather than simply as a descriptive title. However, the title of a series, franchise, or creative brand — where the mark is used consistently and repeatedly in connection with a range of goods and services over time — is more readily registrable, and many well-known series titles, character names, and studio brands are, in practice, registered trade marks. Their exploitation through licensing, merchandising, and brand partnerships can represent highly significant revenue streams.
Infringement and passing off
The owner of a registered trade mark has the right to prevent third parties from using an identical or similar sign in relation to identical or similar goods or services where there is a likelihood of confusion, or — for marks with a reputation — in relation to any goods or services where such use takes unfair advantage of, or is detrimental to, the distinctive character or repute of the mark.
Where a mark is not registered, its owner may have recourse to the tort of passing off. The classic elements are goodwill in the mark, a misrepresentation by the defendant leading the public to believe that the defendant's goods or services are those of the claimant, and resulting damage. Passing off provides an important safety net for unregistered marks but is generally more demanding and expensive to enforce than a registered trade mark.
Finally…
Creators, your brand is as important as your content — and trade mark registration is the legal mechanism that protects it. Investing in trade mark protection at an early stage, rather than waiting until a problem arises, is invariably the better course.
DISCLAIMER: Please note that this content is for informational purposes only; it does not constitute, and should not be construed as constituting, legal advice. Whilst care is taken to ensure the content is accurate at the time it was produced, it may no longer be. You should seek specific legal advice in respect of particular legal issues or concerns. No liability or responsibility is accepted in respect of the content, or any actions taken based on the content.
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