Trade Marks

We are highly experienced in connection with all aspects of Intellectual Property selection, acquisition, maintenance and enforcement. We aim to work with our client to identify their intellectual property needs and how to achieve them in any given situation. Such situations can include the provision of advice in response to a particular event, the provision of continuous review and support for a client’s marketing activities, and/or Intellectual property audits. We believe in the provision of clear, justified, advice that is commercially relevant and useful to our client and their situation.

We set out below a short, very general, introduction to trade marks. Every trade mark situation is different and, as such, although we believe that the material below is generally relevant, we do not recommend relying on the information therein. If you have a particular issue in connection with which you would like our help, we invite you to contact us at one of the addressed to the right of this text or via our contact form.

What Is A Trade Mark?

Trade marks act as a link between a product or service and the person providing it. Most trade marks are words, and/or images (including holograms), though other identifiers, such as colour, shape, sound or smell, can also become effective marks.

Trade mark registration is granted by a national or international official body. Registration gives the owner control over who can use the mark in the geographical area covered by the registration in respect of the products or services for which it is registered, enabling potentially or actually confusing use of the same or similar mark by others to be challenged.

Why register?

It enables you to take action via the courts against someone else using the same or a similar mark. Litigation is expensive, so the mere threat of litigation can be sufficient to enable a problem of “infringement” to be sorted out quickly and effectively.

Creating And Using Trade Marks

A trade mark can be created intentionally or arise by accident. If a new brand or product is being launched, it usually needs a brand name. Once a name is proposed, you need to check that the intended trade mark is available for use in the country or countries where the trade mark will be used. This can be done by searching the “Registers” of trade marks, but you also need to search elsewhere to see if anyone else is actually using the same or a similar mark already, but who has not bothered to register. If the trade mark appears available, it is wise to apply for one or more trade mark registrations straight away, as this means you will likely be the first to register and, once you have applied, others can see that and, if they were thinking of using a similar mark, think again.

Registering Your Trade Mark

To register your trade mark, you need to apply to the relevant national or international office, and they check if the mark meets the legal criteria. These criteria vary from country to country. Typically they include the requirement that the trade mark is not descriptive or deceptive and is capable of distinguishing the applicant’s goods and/or services from those of others. If those criteria are met, then the application is usually advertised to allow others to object to the application should they so wish. If the criteria are not met, then the office issues an objection to the application and the applicant (or their representatives) are given the opportunity to respond, with a view to persuading the office that the application does meet the criteria, or amending the application so that it does. If an applicant does not wish to continue with an application at any time, the application process can simply be terminated at that stage.

After Registration?

Registration once obtained stays in force for a period of time, usually 10 years from the date of application, at the end of which it can be renewed if that is desired. Assuming renewal is done regularly, usually every 10 years, a trade mark registration may be maintained for as long as its owner wishes. The strength or enforceability of the trade mark registration can vary during the life of the registration depending on the use made of it. Such use can be by the mark owner or by others, who usually pay the owner for such activity.

Valuation

A good trade mark can be a valuable asset. The best trade marks are those used to sustain a business, where the names are often of far greater value than all the ‘tangible assets’ such as stock, plant and machinery owned by the business in question.

When?

The best time at which to address the issue of trade marks is before use of the trade mark commences. Such an approach is not, however, always possible and trade mark issues can be addressed at any time. It is our experience that it is easer to resolve such issues if they are addressed sooner rather than later.

Charges

Selecting, checking for availability and applying to register are all areas where we can help with a view to improving the quality and usefulness of any registration. As with all registered intellectual property rights, registered trade marks are commercial tools. Acquiring them may not cost as little as a client might wish, but they are valuable assets once secured. You can try and register yourself, but we believe we add more value than we charge. Our charges are calculated on the basis of standard charges for certain standard activities, and on the basis of time spent for other activities. We will provide estimates of our charges for proposed activities either when we propose them, or upon request.