Trade Marks

If another party uses a name or logo identical or similar to yours and it either causes confusion in the marketplace or there is a danger of confusion, this may be an infringement of your trade mark rights. The first step is usually to gather evidence and seek professional advice on whether to challenge the use. The advice will assess many factors including the trade mark rights you have and whether there is a case for infringement.

Trade mark infringement occurs when another party uses a mark that is identical or confusingly similar to a registered trade mark, in connection with the same or similar goods or services, without the owner’s consent. Sometimes this can be deliberate use, at other times it can be innocent, but infringement can occur under either circumstances. If you spot something it is very important to discuss the matter with a chartered trade mark attorney before taking any meaningful action.

Yes. If you believe a trade mark should not be registered, you can oppose it during the application stage. If the mark has already registered there are various means at your disposal for cancelling the registration. Opposition and cancellation grounds may include similarity to your own (earlier) trade mark right, lack of distinctiveness or bad faith.

Disputes may be resolved through negotiation, settlement agreements, mediation, or formal opposition (or cancellation) and court proceedings. The best route depends on the strength of the case, the commercial importance of the mark and the desired outcome. Budgetary constraints are always a major factor in any dispute because proceedings can get expensive, particularly if a matter goes to court.

Typical evidence would include background details of the mark in question and the business around it, details of its use and evidence of confusion in the marketplace if there is some. Case law precedents are very important too. Where passing off (unregistered rights) is claimed, evidence of reputation and goodwill in the mark is essential.

You can usually only do this if you have registered your trade mark in that country or region. Trade mark rights are territorial, so protection must be secured in each market where you want to enforce your brand. With that said, some territories (such as the UK) recogise trade mark rights through use as well as as registration, so if you have been using an unregistered mark consistently abroad for a sustained length of time then action may still be possible, depending on the laws and practices of the territory concerned.

Applications are filed with the UK Intellectual Property Office. You would need to provide details of the mark and specify the classes of goods or services you want protection for. Before launching any new brand it is vital to conduct a proper search of the register. If you do not and it later turns out you are trying to register a mark (and use it) which is identical or close to an existing trade mark right belonging to another business in the same commercial field, then you are probably not free to use your mark and may not be able to register it. When this happens, your time and money could be wasted.

You can apply yourself, but the process can be complex. Many successful businesses outsource the expertise to a trade mark attorney to help choose the right classes, prepare the application and deal with objections or oppositions. There are many factors to consider when registering and launching a brand and the strategy around this is just as important as your other business strategies. It is never a simple case of pick a brand name, register it and launch your business.

The best time is before you launch a new product, service or brand identity and as soon as thorough searches have been conducted. You need to do your research first. As soon as you make an application you will receive an application filing date which establishes the date from which your (eventual) registration will commence. Applying early ensures your brand is protected from the start and reduces the risk of conflicts with existing rights.

Trade marks are registered in specific classes covering goods and services. Choosing the right classes and goods specifications is vital. Choose too narrow and there will be gaps in your trade mark protection; choose too broad and you risk rejection and face greater potential opposition threats from other interested businesses. You should not go it alone if you want to do it properly because that is false economy in the long run.

A registered trade mark gives you clear, legally enforceable rights. An unregistered trade mark may still have protection under common law through prior continuous use, but it is far harder to prove and enforce. Registration provides stronger, more certain protection.

A trade mark attorney will consider your entire business strategy – the brand you have and how best to protect it. Searches are vital because the strategy can then be tailored in a way that looks to avoid any potential conflicts that have been identified. The professional trade mark attorney has the expertise and experience to guide you through the process, from clearance searches and filing applications to handling disputes and managing renewals. This helps maximise protection and reduce the risk of costly mistakes. When choosing a professional trade mark attorney, make sure to select one from a firm that is regulated through IPReg. Steer clear from the cowboys.

We offer a full range of services to help you protect and enforce your trade marks and brand identity, as follows:

• New mark searches and registrability
• Advising on the availability for use of trade marks and their registrability anywhere in the world.
• Trade mark registration
• Applying for and securing registration of trade marks in the UK and all overseas territories.
• Contentious work
• Opposing and applying to cancel or invalidate third party trade mark applications and registrations. Defending trade marks against attack.
• Conflict advice
• Advice and support on trade mark infringement and unfair competition law.
• Maintenance and renewal of trade marks
• Advising on due dates and renewing trade marks.
• Anti-counterfeiting advice
• Assisting with policing trade mark portfolios worldwide. Registering marks with Customs and dealing with Customs counterfeit seizures.
• Assignments & licences
• Drafting trade mark assignments and licences and applying to record ownership changes and third party interests.
• Trade mark portfolio management
• Maintenance of trade mark records and advising re portfolio management.
• Due diligence work
• Advising and assisting with the acquisition or disposal of trade marks as part of business acquisitions.
• Watching services
• Protecting trade marks by monitoring third party trade mark activity.