Frequently Asked Questions

Why should I use a Chartered Trade Mark Attorney?

Chartered Trade Mark Attorneys are experts in the law and legal practice relating to trade marks and designs.   Specialist firms like ours deal with searches and advise on registrability on a daily basis.   We also work continuously with the various national Trade Marks Offices and the European Community Trade Marks Office.   We are very familiar with all the procedures and we know when changes in the law or a recent Court decision may affect what happens to a trade mark application or registration.   We have in-house software systems to keep track of the progress of all trade mark matters and to ensure that any official terms are met and that official fees are paid on time.

In the United Kingdom, trade mark attorneys are a regulated profession.   There are about 500 individuals on the Register, which was originally established under the Copyright, Designs & Patents Act, 1988.   In order to be registered, a trade mark practitioner, whether a solicitor, barrister or other legal specialist, must pass the qualifying examinations of the Institute of Trade Mark Attorneys.

Many applicants do not take professional advice on what they should register and how to obtain the best and most appropriate protection, but this can be a false economy.   If a trade mark application is refused by the UK Intellectual Property Office the official fees are not refundable.  Even if a trade mark application is accepted, an unrepresented applicant may not have taken all the steps necessary to reduce the risk of opposition.   There could even be a subsequent application to have the registration declared invalid.  It may be difficult or impossible to file an effective defence in such circumstances if the application was not properly researched.   Oppositions and other contested proceedings can easily involve the unwary applicant in expense greater than the cost of using a qualified trade mark attorney for the application.   The loss of a trade mark registration through an invalidation action can have serious consequences, including depriving the proprietor of any defence against a claim of trade mark infringement.

You may also need to consult a trade mark attorney or a solicitor if you receive a claim of infringement or passing-off or wish to take action against another party.

What about confidentiality?

Since 1990, communications with trade mark attorneys have been “privileged” from disclosure on any matter relating to the protection of any design or trade mark or involving passing off.  This means that our legal advice to you on these subjects will remain confidential in the same way as advice from a solicitor or barrister.

What Makes a Good Trade Mark?

A good trade mark is:

  • Distinctive, memorable, unusual, allusive e.g. KODAK for cameras, PENGUIN for biscuits, APPLETISE for apple drinks.
  • Linguistically acceptable within the relevant geographical market e.g. NOVA for cars is a good trade mark in English- speaking countries but not in Spain where it means does not go!
  • Not in conflict with another trader’s rights e.g. RAJAMAMA could not be registered in the face of the restaurant chain WAGAMAMA

A good trade mark is not:

  • Descriptive (including geographically), offensive or deceptive, e.g. DOUBLEMINT for chewing gum, DEATH for cigarettes or NAPA VALLEY for German wines
  • One which has become generic with use, e.g. escalator. These are generally associated with a novel product, usually protected by patent. Care needs to be taken when such products are introduced to the market and afterwards.

Why should I protect my brand name and logo?

By registering your brand name or logo, you can establish rights to it even before it is used. Having a registered trade mark enables you to take action for infringement under trade mark law. The main test for infringement is whether there is a likelihood of confusion with the registered mark. Also, Trading Standards Officers will be able to take immediate action against counterfeiters on proof of trade mark registration, as it is proof of ownership.

How much does it cost to protect my brand name and logo?

The most straightforward trade mark registration, filed in one category of goods or services, can often be obtained for under £700, using the advice and expertise of a trade mark attorney.

How can I protect my brand name and logo?

By registering your trade mark. Trade mark registrations last for 10 years and can be renewed indefinitely for further 10 year periods on payment of renewal fees. But if they are not used for five years continuously, they might be revoked and removed from the Register. Anyone can bring a revocation action, so it is important to keep a record of the use of the mark.

What is passing off?

This is an action in law based on the principle that no one has the right to represent their goods and services as the goods and services of someone else. The UK recognises “common law” rights in marks which have been used but not necessarily registered.

The main difference between a passing-off action and an action for trade mark infringement is that, when a mark is registered, it is not necessary to prove ownership or that the mark has a reputation.

Another business has the same name as me, what can I do about it?

If you suspect the other business has registered the company name in order to benefit from the goodwill you have built up, you may be able to file a complaint with the Company Names Tribunal. We can represent you in this tribunal, which was set up in October 2008 to deal particularly with opportunistic company name registrations. Remember that a company name registration does not give any trade mark rights to the name.

How can I protect my website domain?

Many companies try to protect their website domain names by registering many other similar domains at various levels. But if the name is distinctive in law, it may be more cost effective to obtain a trade mark registration. This can help you to challenge any later domain names that may be obtained by cybersquatters as well as defend your name against use of confusingly similar names in the course of business.

Another business has a very similar web domain, what can I do about it?

If you are not in competing areas of business, one possibility is to agree to share a web page which then points enquirers to the site they actually want. But if confusion is causing damage to your business or goodwill, you may well have a remedy in law, especially with a validly registered trade mark.

How can I defend my trademarks?

You may need to monitor applications for similar marks, particularly now that the UK Intellectual Property Office, like the European Community Trade Mark Office, no longer cites existing registered trade marks as obstacles to new applications.

A subscription to our trade mark watching service will alert you to similar new applications in any part of the world so that you have an opportunity to oppose them. Policing your rights in this way is an essential part of protecting your brand.