Some people have been left amazed by the news that Bridgend luxury candlemaker ‘Fizzy Foam Ltd’ has been successful in its application to trade mark the Welsh words ‘Cariad,’ ‘Hiraeth’ and the words ‘Welsh Cake’ at the UK Intellectual Property Office. It is often assumed that registration of a trade mark means that you are the only person allowed to use those words in your business, but here we debunk some of that myth.
Trade marks protect intellectual property and prevent use of the ‘mark’ (sometimes a word or phrase, sometimes figurative) by others without prior permission. Registering a trade mark makes the world aware that you use that mark for the specific goods or services covered by the trade mark, and can help you protect your goods or brand against imitations and counterfeits.
However, here’s the important bit: Trade marks only give protection for the classes of goods they are accepted and registered for. In this case, the candlemaker’s trade marks were all applied for in class 4 and cover ‘Candles; Perfumed Candles; Soy Candles; Scented Candles; Fragranced Candles; Candles in tins’. What that means is that another person cannot (at least on the face of it) sell their scented candles using the words covered by these trade marks. Someone who infringes a trade mark by selling they same type of candles with the same name may find themselves facing claims for trade mark infringement.
A quick look at the register of trade marks shows that this is not the first time ‘Cariad’ has been registered however, and the news hype is perhaps over egged. For example, another trade mark ‘Cariad’ exists for natural flowers and roses; another for jewellery and watches; and another for training services relating to first aid.
Given the nature of the product and the common use of the words, we have no doubt that this decision of the IPO may ruffle some feathers. It is even possible that it may be open to challenge at a later date. However, for the time being at least Fizzy Foam Limited has a monopoly on these trading names for candles. What was not reported widely was that Fizzy Foam also applied to trade mark the word ‘Cwtch’ in relation to candles, but later withdrew that application. Details of why are not provided, but reasons might include objections raised by other people already using the mark or the registrar’s own concerns as to lack of distinctiveness or commonality of the word.
There is a big advantage in seeking to register your trade marks. When people with a registered trade mark find themselves faced with a competitor infringing on those trademarks, it will be assumed that the public will be confused and that a business misrepresentation has occurred (there is no need to prove actual confusion).
Offensive, misleading, and widely common material fall out of the scope of trade marks, as do national flags and official emblems. It is vital therefore to get proper legal advice on whether your intellectual property can be trade marked and which class to file it under, so as to best protect business needs and future growth. It is also imperative for businesses, whether start up fledglings or well established, to continually review what intellectual property they might have in the business and form strategies to protect and exploit it appropriately.
