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An article by Ron Wheeldon on the pursuit, registration and enforcement of trade mark rights

Curiouser and Curiouser

The “game of the name” as I call the pursuit, registration and enforcement of trade mark rights is an entertaining one and one which, for many years, was quite settled. As a newcomer, back in 1982, I remember thinking that it is really too simple to challenge the intellect and something with which I imagined I would become bored in short order. Within a couple of years, I had concluded that it was the epitome of the irreducibly complex that denotes intelligent design and is intensely stimulating – and then found it simple again, and complex, by turn right up until now as I am in my 38th year in the game.

To my mind the function of law is to be as precise as language and human fallibility will allow in defining what a person’s rights are – and are not. The idea is that the hypothetical “you” (the reader, but idealised) can read the law and know what you can and cannot do. More particularly in the context of trade mark rights, you know what your competitors and others whom you may encounter in commerce, can and cannot do.

 It is a simple ideal. We are all assumed to know the law and ignorance of the law does not excuse from breaking it, so simple justice requires that it should be easily accessible, easy to understand and certain. For example, we know that we cannot possess a firearm without a licence and there is not much ambiguity there. We also know that we cannot proceed in a car through an intersection if the traffic light facing us is red (although more and more of us do just that) and we know that breaking into someone else’s home and removing goods with the intention of depriving them permanently of possession is theft. Again, it happens quite a lot, but the most bare-faced law breaker in those examples knows that he or she is breaking the law.

With trade mark rights it was once that there was no right in the mark itself, but only in the goodwill of a particular business which could be identified in part by the mark and of course there was no easy way of establishing what rights were out there. Thomas Jefferson noted as early as 1791 the need for a trade mark law in the US although it seems the French were the first to pass a comprehensive trade mark law in 1857. The need was this was identified largely in the nineteenth century where business was flourishing but communication was poor and availability of a mark in one part of the country did not mean it was available anywhere else. The idea in each case was the same – create a register so rights could be registered and thereby given nationwide effect and made easily accessible. The UK adopted the first British Trade Marks Act in 1875.

The registers at first were there to reflect rights that were acquired at common law as part of the goodwill of a business, but, as the law developed and various countries took different approaches, a right developed that was statutory and reversed the order. From the early twentieth century it became that one could “book” a trade mark – file for one you intended to use and obtain registration before going into use. The aim of this – of course – was again certainty. If you could decide upon a mark, reserve it for use in relation to particular goods, satisfy the authorities that it was suitable against the criteria in the Act, you could be granted the exclusive right to use that mark in commerce before embarking on all the expense associated with bringing a new mark into use.