TRADE MARKS

Before you begin using a particular trade mark, it is advisable to search for other registered marks to check that you won’t be infringing someone else’s rights.

It is usually best to do this before you decide on a particular trade mark, so that you aren’t forced to re-brand at a later stage, which can be time-consuming and relatively expensive.

For more information, please see the following article relating to searching and clearance. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

In general, a trade mark needs to be new, distinctive and non-descriptive (of the relevant goods or services) to be registrable. However, there are some exclusions based on how similar the mark is to existing marks, and if the mark does not distinguish your goods and services from those originating elsewhere, it is unlikely to be considered registrable.

For more information, please see the following article relating to registrability. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

A trade mark registration has many advantages, including:

• Safeguarding your investment in your brand name and corporate identity
• Preventing others from using an identical or confusingly similar trade mark, in relation to overlapping and/or related goods or services
• Providing more easily enforceable protection than unregistered trade marks – although unregistered trade marks exist via the common law of passing off, these take time to establish and are often expensive and difficult to enforce
• Evidence of brand ownership
• Stopping others from registering your trade mark or a similar trade mark, and preventing them from continuing to use of your trade mark

Furthermore, a trademark registration is an asset of your business that can be transferred (assigned) or licensed for money. It is also important if you wish to franchise, and increases brand value.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

Your trade mark filing strategy will depend on where are doing business around the world, and where you expect to expand to in future. This is because trade marks are territorial, so separate registered trade marks are needed for each country or region for which protection is required.

However, registered trade marks can be revoked for non-use, for example, so it is not as simple as just registering your mark in as many countries as possible.

For more information, please see the following article relating to filing strategies. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

If you have applied for a registered trade mark, another party may bring an opposition action against your application if they think your trade mark is too similar to one of their trade marks, for example. You would then need to overcome the points raised during opposition in order to attain registration.

Alternatively, it may be that you own a trade mark and find that another party has applied for a trade mark which is confusingly similar to your own. In this case, a good option is to file an opposition to try and prevent the other mark becoming registered

Whichever scenario you find yourself in, Albright IP can advise and guide you through the whole opposition process.

For more information, please see the following article relating to trade mark opposition. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

Whilst a trade mark application can proceed to registration, it may still be invalid. In other words, there may be good reason why the mark should never have been registered in the first place, and this can make the mark vulnerable to invalidation.

Invalidation is based on the grounds that the mark is inherently unregistrable, either because it is too similar to an existing mark, or that it meets one of the criteria for exclusion. This is not always clear-cut, but we can advise on the merits of an invalidation action if you provide us with full details of your situation.

For more information, please see the following article relating to trade mark invalidation. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

Following registration of a trade mark, it can be possible to have the mark revoked later for one of several reasons.

A common reason for revoking a registered trade mark is due to ‘non-use’ during the 5 years post-dating registration. Examples of other reasons include the mark having become a common name in the trade for the goods and/or services it is registered for, or that use of the mark is deceptive in some way, relating to the geographical origin of goods, for example.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

Albright IP offers ‘watching’ services which allow you to keep track of third party applications and registrations relating to trade marks, domain names or company names similar to your own.

If it turns out that another company is trying to register a name or brand which is overly similar to your own, having a watching service in place gives you the chance to take preventative action at the earliest possible opportunity. This in turn enables you to maintain your brand identity, and avoid others encroaching on or benefiting from your established brand.

For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

It is possible that, once you have a registered trade mark, a third party will begin infringing your mark. This does not always entail ‘direct’ infringement, where someone uses an identical copy of your logo or brand. The scope of protection of a registered trade mark also covers ‘confusingly similar’ marks, so infringement can also occur where a third party mark is similar to yours.

Examples of infringing acts include affixing the trade mark to goods or their packaging, selling goods or supplying services under the trade mark, importing/exporting goods under the trade mark, and using the trade mark on promotional material or in advertising.

For more information, please see the following article relating to trade mark infringement. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

The law of ‘passing off’ is used to protect unregistered trade marks. This stops one party from misrepresenting their goods or services as those of another.

In order to succeed in a passing off action, it must be shown that:
1) there is ‘goodwill’ in the unregistered mark,
2) that the third party goods/services are being misrepresented as those of the owner of the unregistered mark (even if unintentional), and
3) that there has been (or is likely to be) damage as a result of that misrepresentation.

It can be more difficult to defend unregistered trade marks as opposed to registered trade marks. For more information, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.

It is possible to license or transfer a trade mark from one person (or company) to another. Licensing permits another party to use the mark, e.g. selling products bearing the mark, without infringing. In return, the trade mark owner can receive a royalty, for example. Assignment transfers the trade mark to another party, and the previous owner no longer holds the trade mark.

Different types of licenses are possible, and the terms can be negotiated according to the value of the trade mark (or trade mark portfolio). Trade mark assignments normally transfer all of the trade mark rights from one party (the ‘assignor’) to the other (the ‘assignee’). Licenses and assignments should be recorded at the relevant Trade Mark Office once finalised.

For more information, please see the following articles relating to licensing and assignments. Alternatively, please contact us by calling +44 (0) 1242 691 801 to speak with one of our qualified UK and European attorneys.