Trademark Advice and Protection
Everything you need to know about Trademarks
Do you want to make sure that nobody else can use your trading name?
Do you want to protect the value of your business name?
Registering Trademarks can help you do this!
Trademark protection is a complex area of law and seeking trademark legal advice as early as possible in your journey is vital. This not only helps to ensure that you have the right to register your marks but also that you are registering them in the right way and in the appropriate territories.
Seeking trademark advice from trademark solicitors is usually the first step to understanding trademark protection in the context of your particular brand. The trademark solicitors at LawBite can help with all aspects of this process. At the pre-filing stage this includes advising which of your brand elements are registrable, whether your marks are already taken, which classes you should cover and carefully drafting a bespoke specification to reflect your business model. We then file the application(s) on your behalf and monitor and entire process through to registration, liaising with the trademark office as and when necessary.
The trademark advice we offer also extends to handling third party trademark infringement claims, whether this is defending your trademark in the context of opposition proceedings or pursuing somebody who is breaching your own rights. This includes expert business legal advice and recommendations about strategy and negotiations, as well as drafting pre-action correspondence and formal statements of case.
Trademark protection doesn’t need to cost the earth and LawBite offers particularly competitive trademark legal advice and packages. Our trademark solicitors can recommend the most cost-effective way of achieving trademark registration and, unlike most other firms, our fees are fixed regardless of the number of trademark classes you choose to protect!
How can our Trademark lawyers assist you?
Our lawyers can provide expert trademark legal advice and help you with all aspects of protection. They will:
- Identify your potential trademarks and get them registered.
- Check trademark registers to make sure that you are not infringing or are likely to infringe other peoples’ trademarks.
- Show you how to commercialise the value of your trademark.
Frequently asked questions about trademarks
What is a trademark?
A trademark is a logo or name that a business uses to differentiate its goods or services from those of all other businesses. It’s a badge of origin (or trade) that tells the consumer “this is my product”.
Why should I register my goods and services?
If you have a registered trademark it will add value to your business.
It will also make sure that other businesses cannot trade using your name or reputation.
What can I register as a trademark?
These are some of the features that can be registered as Trademarks:
- Designs, letters and numbers
- The shape of a product or its packaging
How to register a trademark in the UK
To register a trademark, you apply to the IPO, supplying details of your proposed mark at http://www.gov.uk/register-a-trademark.
You need to state the goods or services for which the mark is to be used. The registration applies only to the classes your request. The IPO uses the NICE Classification system, which separates goods into 34 categories and provides 11 classes of services to choose from.
After you file your application, the IPO examines it to check that the registration requirements have been met, including conducting a comparison of the mark with other registered marks. Within 20 days of receipt of the application, the IPO sends you a report of two months in which to address any issues raised in the report.
If the examiner is satisfied with the application in its current form or following any required amends, your application is published in the Trade Marks Journal , where everybody can read all about it for a further two months.
In absence of opposition, or if any opposition is withdrawn or proved unsuccessful, the trademark is registered and you receive a certificate of registration. The whole process can take only a few months from start to finish – voila!
What is the point of a trademark?
They essentially give the owner the right to prevent rival businesses from using the same trademark in that territory (or something confusingly similar to it) when trading in identical or similar goods or services. This helps to avoid brand dilution and prevent other people from ‘riding on your coattails’. Trademarks add huge value to a business and will be something investors, franchisees and purchasers look for as part of their due diligence.
Do trademarks need to be registered? What is a trademark class?
Strictly speaking, no. It is possible to build up unregistered rights in signs used in commerce. However, registration of marks serves as important evidence of the owner’s exclusive rights and makes infringement much easier to prove. In short, those with registered trademarks have far greater legal protection than those without (and registering a business name is not the same thing as registering a trademark!).
What is a trademark class?
Any trademark application must include a list/statement of all goods and services in relation to which the trademark will be used. An internationally agreed system of 45 classes (known as the “Nice Classification”) has been created for this purpose, which groups together broadly similar categories of goods/services. So for example, class 9 covers apps, class 30 covers coffee and class 39 covers car rental.
How many/which trademark classes should I register for?
The number of classes applicants should protect depends entirely on the goods/services being offered under the mark. Specialist advice from a trademark practitioner should always be sought to ensure there isn’t a mismatch between the protection granted by the trademark and the reality of what is being offered under it.
In what territories should I apply for trademark protection?
This depends on where you market and exploit the goods/services protected by your trademark(s). If the bulk of your customers are UK-based then the mark(s) should certainly be protected there. If a lot of your business is in other territories, then you may look to protect the marks in those jurisdictions as well or instead. Note that multiple trademark applications in multiple territories can get very expensive, so start-ups in particular often begin with UK protection and see how things go.
How long does a trademark last?
10 years, although in actual fact they can last forever since they can be renewed indefinitely (provided they are continually used). Considering the monopoly nature of the protection they give, this makes them an extremely valuable asset.
What’s the difference between the superscript ® and ™ symbols?
The ® symbol designates a registered trademark and it is a criminal offence to use it if a mark is not registered. The ™ symbol, on the other hand, may be used to evidence rights in an unregistered mark.
How can I tell if my trademark is too similar to another person’s mark?
The level of similarity will be assessed on a global basis, taking account of the aural, visual and conceptual similarity between the marks. A conflict search against existing registered marks should also be carried out before making a trademark application, to avoid accidental adoption of somebody else’s mark.
What if someone uses my trademark?
This depends on whether the marks is registered or not. If it isn’t, you would have to rely on what is known as the common law action of ‘passing off’. This requires proof of reputation/goodwill, misrepresentation leading to confusion, and consequential damage. If the mark is registered, the claim would be trademark infringement and this is easier to establish. Often a firmly worded letter and subsequent negotiations suffice to reach an amicable resolution, without the need to resort to the courts.
How long does it take to get a trademark?
This depends on the territory. By way of example, UK and EU marks typically take around 4 and 6 months respectively from application to registration (provided there are no oppositions during the process).
How much to register a trademark in the UK?
Again, this is territory dependent. Please see our Trademark Protection Products for options and costs when it comes to protecting your brand. If you would like to discuss any of these in more detail, please get in touch and we would be happy to help!
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