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Have you protected your brand?

Every company, large or small, has a brand or product name which is relied upon by members of the public to repeat their experience. Have you secured trade mark protection for your brand, sub-brand or product names?

It is often said that the brand is one of the most important assets to a business and yet it still surprises us to discover that many clients and potential clients have failed to register their brand as a trade mark. The failure to secure a trade mark can cause some serious ramifications including the company being unable to prevent a third party from using an identical or similar name and the inability of the company to expand into other products/services or territories.

Making an investment in securing a registered trade mark will, in our experience, pay dividends in the future. It is also advisable to review your trade mark portfolio every 2 to 3 years to ensure that you have the right protection in place and no gaps are appearing. At Clarke Willmott, we offer a free IP audit. Please contact Roy Crozier if you would like us to undertake this audit for you.

In this bulletin, we answer 10 basic questions relating to trade mark rights.

1. What signs can be registered as a trade mark?

A trade mark is a sign that is capable of distinguishing the goods or services of one company from those of another and which is registered in relation to particular goods and services. Such signs may, for example, consist of words, logos, colours, sounds or shapes. Examples of more unusual trade marks include the shape of the Coca Cola bottle for beverages, the Intel jingle for computer components and a particular colour of green for fuel which was registered by BP.

2. What signs can’t be registered as a trade mark?

Certain signs are not capable of being registered as a trade mark because they are descriptive of the goods or services themselves and so are not capable of distinguishing the goods or services of one company from another. Examples include: (a) marks which describe the characteristics of the goods or services such as marks which reference the quality, quantity, purpose, value or geographical origin of the goods or services; (b) marks which are customary in the relevant field; (c) shape marks where the shape is typical for the goods in question, functional or adds value to the goods; and (d) marks which are offensive. Marks that have been refused registration on one or more of these grounds include Toy Direct – for toys, Tasty Food – for foodstuffs and slogans such as ‘the one for you’.

If you have a potentially descriptive mark, we may be able to assist you in securing trade mark protection by making some suggestions on how you can vary your mark in order to overcome any objectives based on the above grounds.

3. Why should I register a trade mark?

A trade mark does not give you the right to use that mark.

It is a right to prevent others from using an identical or a similar mark in certain circumstances. A registered trade mark will make it far easier and cheaper for you to prevent third parties from using an identical or similar mark rather than relying on any rights in passing off (which protects the goodwill of the business) which is a far more limited right.

Further, by securing a broad trade mark registration for goods or services not offered presently by you, you will place yourself in a far better position to move into those other areas in the future.

A registered trade mark can also be a valuable asset for your business which can be licensed or sold.

4. Should I have an availability search conducted first?

As stated above, a trade mark does not give the proprietor the right to use the mark. It is therefore important to carry out a full trade mark availability search before using the mark otherwise there is a risk that a third party may challenge your use of the mark in the future. There have been some high profile cases where a company has had to withdraw its new brand following complaints from third parties with prior rights. This can prove to be expensive and embarrassing.

5. Where should I file the trade mark?

As trade mark rights are territorial, it is important that you register your trade mark in your key territories and in countries you may move into in the future. If you do not you risk a third party registering similar rights in those territories and then preventing your expansion into those countries. Some of our clients have approached us because they have failed to file in China, for example, and found that third parties have already registered their mark in that country.

If you wish to cover the UK, you can file either a UK trade mark or a Community wide trade mark covering all EU member states. In broad terms, a Community trade mark will cost around twice as much as the cost of a UK mark and so it is good value if you intend to trade across the EU or would be concerned if goods or services were offered under an identical or similar mark in other EU states.

6. How long does a UK or Community trade mark take to be registered?

A UK application takes approximately 3-4 months if there are no objections or oppositions along the way. In contrast, a Community trade mark application takes approximately 6-9 months if there are no objections or oppositions.

7. How long does a UK or Community trade mark last?

A UK or Community trade mark can last for ever but it will need to be renewed every 10 years by paying the prescribed fee.

8. What is the cost of a trade mark?

This depends on what you file (i.e. a UK or Community Trade Mark) and how many classifications of goods and services you wish to cover. For example, a UK trade mark covering one classification of goods (for example clothing, footwear and headgear which is in Class 25) would cost £620 plus VAT. This includes our fees and the official fees and assumes that there are no objections by the registry or oppositions by third parties. In contrast, a Community trade mark in three classes will cost around £1500 plus VAT.

9. When can a trade mark be revoked for non-use?

If a UK or Community trade mark has been registered for 5 years or more and has not been used during that period, the trade mark can be revoked by a third party for non-use in relation to those goods and services for which the mark has not been used.

As it is common to file a trade mark for a broad range of goods and services that the proprietor may not intend to immediately use the mark in relation to, perhaps to give it boarder rights to enforce against others or the ability to expand into those areas in the future, it is important to re-file such a mark every five years. This will make it far easier and more cost effective to enforce those rights and give the company the ability to move into other areas.

10. How do I monitor if another company is seeking to register my mark?

It is important to ensure that you have a watch notice in place to inform you if a third party has sought to register your brand or a similar one anywhere in the world. The cost of this exercise can be as little as £100 per month plus VAT. This will enable you to take timely action to oppose the mark.