[rb_inline_related](3) Use business-friendly streamlined court procedures The Defender case made use of the shorter trials scheme currently being piloted with the flexible trials scheme pilot in the High Court. It offers streamlined procedures designed for the swift resolution of business disputes. It also sped through the courts, thanks in part to the success of JLR’s summary judgment application, enabling the dispute to be resolved without a full trial. JLR took advantage of the shorter trials scheme timetable to get its application heard promptly. In a system where court timetables are under pressure, being able to fix an early hearing date is a real advantage. (4) Know your limits Many businesses get help from trademark attorneys or lawyers when filing for trade mark protection – their help can eliminate some common mistakes. And of course there is useful guidance on the Intellectual Property Office website. Generally, you cannot register a brand that has no “distinctive character”, that is descriptive, or that has become customary. These hurdles can be overcome if the brand has become distinctive through use, but that has to be proved. It’s also not possible to register a brand that is identical to an earlier mark registered for identical goods, one that is identical or similar to an earlier trade mark registered for similar goods where confusion may result, or a mark which is identical or similar to an earlier trademark with a reputation, where the use of the brand would take unfair advantage or be detrimental to the distinctiveness of that earlier trademark. The Defender case illustrates that a sensible range of goods or services will normally be allowed. But a business should not seek protection for goods or services for which it has no intention of using, as this can make the registration vulnerable to attack. (5) Monitor use of your brands Active monitoring of is a must if you want to protect your brand. If you find infringing activity, a letter before claim is often the first step. These need to be prepared with care to avoid finding yourself on the receiving end of a “threats” action. If litigation is unavoidable, there are different choices to reflect the value and complexity of the dispute. The small claims track in the IPEC is for disputes with a value up to £10,000. For higher value disputes worth up to £500,000, multi-track in the IPEC may be suitable. Alternative dispute resolution (ADR) is widely available for those concerned about the cost of court proceedings. The shorter trials scheme worked well in the Defender case. And for more complex or high value matters, the High Court might still be the best option.
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