Trade marks have value on the balance sheet of a business and are generally considered to be the most commercially significant asset of a business. It is therefore vital to ensure that your trade marks are properly and comprehensively protected. Every business has at least one trade mark, and usually many more, for which protection should be arranged. We have the expertise to help.
We specialise in providing proactive and commercially oriented advice. We have an established track record of providing IP services in a tailored and efficient way. Our team is diverse and includes attorneys with in-house experience as well as attorneys who have provided support to a global branding agency. We also have attorneys who qualified as solicitors before becoming Chartered Trade Mark Attorneys. Our team has a deep understanding of the commercial advice that our clients are looking for. We have an outstanding trade mark prosecution practice and work for some of the world’s largest corporations, managing their European or worldwide trade mark portfolios.
We have extensive experience in opposition and appeal proceedings before the registries, as well as litigation in the UK and overseas; including before the EUIPO, the UKIPO and all levels of English courts. This combination of opposition and litigation experience is rare in UK firms.
When properly used, renewed, policed and protected, a trade mark registration can last forever.
How can our trade mark team help you?
We help protect and police your trade marks by:
- advising you on correct usage
- filing evidence of your use of the mark in those countries where use is required to maintain the registration
- monitoring applications filed for identical or confusingly similar trade marks/company names/domain name and challenging these on your behalf
- recording your trade mark registrations with Customs authorities in order to stop consignments of counterfeit goods
- renewing all registrations in advance of due dates
- recording changes to the ownership of your marks or changes to your address or name
- reviewing your trade mark protection and advising whether it still meets your needs
FAQs
A trade mark (also sometimes called “a brand”) is the badge of origin that differentiates your products or services from your competitors’ products and services. A trade mark is usually a business’ most important asset. If customers are happy with your products or your services, your trade mark will allow them to identify your products and services in the marketplace and repeat their purchase.
Protecting your trade mark (e.g. via trade mark registration) is important; it will give you exclusive rights in the mark and will help prevent your competitors from marketing their products or services with the same (or a similar) trade mark. Note, if you do not register your trade mark quickly enough, someone else may and they could then try to stop you from using the company or product name you wanted.
Many things can be registered as a trade mark: words, names, numbers and logos (or a combination of any of these). A trade mark can also be a smell, a sound, a colour or the shape of a product. Be careful, however, the mark you choose should not be one that a competitor has already adopted.
Protecting your trade mark (e.g. via trade mark registration) is important; it will give you exclusive rights in the mark and will help prevent your competitors from marketing their products or services with the same (or a similar) trade mark. You can also authorise others to use your registered trade mark in return for payment.
Since registration authorities generally operate on a first-come, first-served basis, it is advisable to register your trade mark as soon as possible. It is important your trade mark is registered for the correct goods and services; once your application has been filed, you cannot add new goods or services. A Trade mark Attorney will ensure your trade mark gives you the protection you need.
The best way to protect your mark (also sometimes called “a brand”) is to register it as trade mark. However, not all trade marks can be registered; your proposed trade mark should not be descriptive of your products and services (for example, if you sell soap your trade mark cannot be “soap” or something that clearly means “soap”). It should also be sufficiently original/distinctive (if your trade mark is “We are the best”, customers might not understand this is a trade mark). Be careful, the mark you choose should not be one that a competitor has already adopted; you should always conduct searches before using a new trade mark. Other rules apply and a Trade mark Attorney can help you navigate these obstacles and protect your trade mark.
UK trade marks are registered through the UK Intellectual Property Office (UKIPO), which examines all trade mark applications. Careful, not all trade marks can be registered. The proposed trade mark should not be descriptive of your products and services (if you sell soap your trade mark cannot be “soap” or something that clearly means “soap”). It should also be sufficiently original/distinctive (if your trade mark is “We are the best” customers might not understand this is a trade mark). Also, the mark you choose should not be one that a competitor has already adopted. Other rules apply and a Trade mark Attorney can help you navigate these obstacles.
Once the UKIPO has accepted your trade mark application, it is then published for two months. During that period, any third party that owns prior rights can object to it (something called “an opposition”). You should always conduct searches before registering a new trade mark to reduce the risk of oppositions. A Trade mark Attorney can conduct searches for you to reduce the risk of conflict with third parties.
If your trade mark was filed correctly and is not objected by third parties, it usually proceeds to registration in 3 to 4 months.
In the UK a trade mark lasts for 10 years and can be renewed indefinitely every 10 years. Trade mark Attorneys usually keep records of their clients’ trade marks to ensure no renewal deadline is missed.
In some instances, a registered trade mark can be cancelled; for example, if the trade mark was registered in breach of a third party’s earlier rights. In other cases, you may lose your trade mark (because of a revocation action for non-use brought against it) if you have not used it for a continuous period of five years. A Trade mark Attorney can advise you on these specific risks.
The cost will depend on the number of classes covered by the mark. If your trade mark only covers one class, the official fees are £170, plus the fees of the Trade mark Attorney if you use one. It is important a trade mark application is filed for the correct goods and services; once your application has been filed, you cannot add new goods or services. A Trade mark Attorney will ensure your trade mark gives you the protection you need.
UK trade marks are registered through the UK Intellectual Property Office (UKIPO), which examines all trade mark applications. Be careful, not all trade marks can be registered. The proposed trade mark should not be descriptive of your products and services (if you sell soap your trade mark cannot be “soap” or something that clearly means “soap”). It should also be sufficiently original/distinctive (if your trade mark is “We are the best”, customers might not understand this is a trade mark). Also, the mark you choose should not be one that a competitor has already adopted. Other rules apply and a Trade mark Attorney can help you navigate these obstacles.
A trade mark (also sometimes called “a brand”) is the badge of origin that differentiates your products or services from your competitors’ products and services. This is different from the name of your business, and in many instances, a business’ name is different from its trade marks. Registration of your company name gives no protection to your brand. A Trade mark Attorney will advise you on whether you should also register your business name as a trade mark.
No. Worse still, putting the ® symbol next to your brand if you have not already registered it as a trade mark is a criminal offence. A Trade mark Attorney will advise on the symbols you can and cannot use.
The mark you choose should not be one that a competitor has already adopted. You should always conduct searches before using a new trade mark. You can check whether a trade mark has already been registered through Trade mark Offices’ own databases, but the search options are limited. Your new trade mark could be blocked because it conflicts with an earlier identical mark but also because it looks or sounds similar to an earlier mark. It is prudent to ask a Trade mark Attorney to help conduct searches to minimise any risk of conflict.
