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How to protect a trade mark

How can you protect your trade mark?

Trade marks differentiate the products or services of one company from another. Trade marks are badges of origin and can take the form of names, words, shapes, colours and quite often logos (read this article for a fuller description of what a trade mark is).

A trade mark is a valuable asset that needs to be looked after and that is why it’s important to consider registering a trade mark at an early stage of business life.

Many new businesses think that once they have set up a company and registered it with Companies House, they can enter the market place and trade under that name. This can be a huge mistake and may put a company out of business. The Trade Marks’ Register (run by the UK IPO) must be checked first, and runs completely independently of the Companies Register (run by Companies House).

What do you need to do to protect a trade mark?

The first step with trade marks is to avoid any conflict regarding the name of a product or service. Searches need to be conducted to determine what trade marks are already on the Trade Marks Register and whether or not the proposed trade mark is safe to adopt and use within the marketplace without fear of infringing existing trade marks.

It is possible to undertake limited searches at no cost via the websites of the UK Intellectual Property Office and the European equivalent.

However, those on-line searches are limited. They don’t search for phonetically similar marks, nor do they search for what may be deemed confusingly similar marks. They do not guarantee that the trade mark is free to use or whether the trade mark can be registered.

This is where the Institute of Trade Mark Attorneys (ITMA) comes in. ITMA members are speficially taught and examined on all the necessary skills. ITMA members maintain their professional knowledge through a thorough programme of continuing professional development and are subject to independent regulation.

Although it’s possible to apply to register trade marks without using the services of a trade mark attorney, trade mark attorneys can undertake the whole process more quickly (the process mainly involves submitting forms to the Trade Marks Registry, part of the IPO, and arguing against any objections raised by the IPO).

What is the trade mark registration process?

In making an application, it’s necessary to give a representation of the trade mark and define the class or classes for which the trade mark is to be registered.

There are 45 classes in the UK and it may be necessary to file for more than one class depending on the goods or services in question. The number of classes will determine the official fees to be paid to the Registry, currently £200 for the first class and £50 for each additional class.

In addition, there are fees to be paid to a trade mark attorney which will vary. In straightforward cases it would be very unusual for them to exceed £1,000 for one class to take the application up to registration of the mark. However it is worth talking to a firm of trade mark attorneys for more detail.

The Registry then examines the application to ensure that it meets the requirements of the Trade Marks Act.

Once the Registry is satisfied that the application can proceed, the Registry publishes the application in a weekly Trade Marks Journal so that interested parties may learn of the application and may, if they so wish, lodge an opposition. They have two months in which to do this and can extend the term by one month.

If no oppositions are received, the Registry will enter the mark on the Trade Marks Register and will issue you with a certificate. If there are oppositions, your trade mark attorney will endeavour to resolve them and will represent you at hearings conducted by officials of the Registry.

Assuming all goes well and you receive your registration certificate, your mark will remain validly on the Register provided it is in use and the renewal fees have been paid. The mark remains on the Register indefinitely subject to these requirements. The renewal fees are due for payment every ten years.

Maggie Ramage is president of the Institute of Trade Mark Attorneys.

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