IP PRIMERS

TRADE MARKS

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IP PRIMERS TRADE MARKS

Contents What is a trade mark? Choosing a trade mark Why register a trade mark? Cost of trade mark registration Timescales for registration Protecting your trade mark globally Watch service Domain Names When to use and when to use General Comments What is a trade mark?
A trade mark is a sign used by a business to distinguish their goods or services from those of their competitors. Typically a trade mark may consist of a word or device (often described as a logo) although more unusual signs such as sounds or smells can also function as trade marks.

Registration is a significant deterrent to other traders and provides concrete proof of a claim to legal rights. While marks which have been used and acquired a reputation also enjoy legal protection in a number of countries, it is generally easier to protect a registered trade mark against unauthorised use.

Cost of trade mark registration

Whichever system of registration is used, official fees are payable to the relevant local Registry for filing the trade mark application. In some countries official registration fees are also payable at the end of the process. The official fees payable for a UK trade mark application are currently 200 for the first category of goods or services claimed and 50 for each additional category. Filing a Community Trade Mark application (which covers all 25 Member States of the European Union in a single filing) will involve official fees of approximately 650 - 700. A Community Trade Mark application can cover up to three categories of goods or services for the same official fee. It becomes economically sensible, to file a Community Trade Mark application when it is the intention to market your goods or services in three or more Member States.

Choosing a trade mark

It is important, when starting a new business, and choosing a trade mark, to ensure that this will not conflict with trade marks already used or registered by others. It is possible to check for earlier registrations by conducting searches of the lists of registered and pending trade marks which are available for public inspection in most countries. Conducting a proper trade mark search is a skilled business and it is always advisable to seek professional help. Failure to check that a proposed mark is properly available may lead to threats of legal proceedings from owners of conflicting earlier marks. Typical costs for clearance searching are between 300-400 per mark although "knock-out" searches on word marks (which can perform a useful pre-screening function) can be done from 50 per mark. These are not full clearance searches however. If the mark to be searched has a substantial device or logo element and covers a broad range of goods or services, searching costs will increase. Trade mark searching is one of the more important steps to take when setting up a new business. It is equally advisable to take steps to register the trade mark once it has been chosen.

In addition to the official fees, most trade mark advisors will charge you for their services in advising on the new filing and assisting in the preparation of the application. It is important to ensure that the application covers the proposed business activities since it is normally not possible to amend the claim once the application is filed. Our service charge for a UK filing is 265 as a basic, and 55 for each additional category of goods claimed. This fee includes a 30 minute consultation if required, whether in person, over the telephone or by correspondence. Once the application is filed it will be examined by the relevant Trade Mark Registry who may object to the mark if it conflicts with earlier registrations or is considered not sufficiently unique or distinctive of the applicant's goods or services. Again it is usual to appoint a specialist advisor to deal with such objections, which may be overcome by written argument or attending a Hearing at the relevant Registry. As a rule of thumb if objections are encountered but eventually overcome the total cost of securing a trade mark registration in the United Kingdom is unlikely to exceed 800 - 1,000. Further registration fees are payable under the Community Trade Mark system; the average cost of securing a Community Trade Mark is between 2,000 - 2,500 -

Why register a trade mark?

Registration of a trade mark gives the owner the exclusive right to use the mark for the goods or services for which it has been registered in that country. Broader protection arises from registration in the case of trade marks which are well known or famous.

IP PRIMERS TRADE MARKS

although this figure may increase if a broad category of goods or services is to be covered.

Timescales for registration

A UK trade mark application which encounters no significant difficulties can be registered in less than a year. All rights in the mark, once registered, date back to the original filing. The application goes through a number of stages before it is registered, of which the most important are the examination by the UK Trade Mark Registry and, once objections have been dealt with, its publication in the UK Trade Marks Journal. Publication puts third parties on notice of the application and gives them an opportunity to object it they consider that the new application conflicts with their earlier rights. Marks filed under the Community Trade Mark registration system are usually accepted and registered within 18 months - 2 years of the original filing. Again, the rights obtained by CTM registration will be backdated to the original filing date.

has been filed, it is prudent to set up a Watch Service in your country(ies) of interest to ensure that a competitor does not seek to register a mark which is identical or similar to yours. A watch service can be set up on an annual basis for a relatively low cost.

Domain Names
We can register your domain names not only as domain names but also as trade marks. When filing an application to register a domain name as a trade mark the qualifier .com, .co.uk etc is not taken into account when the Patent Office is carrying out similarity comparisons against earlier trade marks since it is only the individual identifying element in which exclusive rights are granted.

When to use and when to use

The letters indicate that a name (whether word or logo or a combination of both) is being used to identify a product or service which, through use, may have acquired common law rights. They can be used whether or not the mark is actually registered. The symbol can only be used by the registered proprietor of a mark. It is illegal to use this symbol if the mark is not registered. The indicates that the owner of the trade mark has statutory rights in the mark by which he can sue users of an identical or similar mark on the same or similar goods or services for infringement of his rights. The does not mean that the registered proprietor does not also have common law rights which he has acquired through use and which are additional to the statutory rights conveyed by the registration.

Protecting your trade marks globally

In addition to protecting your trade mark in the UK and/or throughout the EU, it is possible to protect your trade mark by way of registration in most countries of the world. Since 1996 it has been possible to obtain an International Registration under the Madrid Protocol designating countries of particular interest. At present, nearly 80 countries are members of the Protocol and include both West and East European countries as well as the USA and certain far Eastern countries such as Japan, Singapore and China and some African states. The list of members grows monthly and this system of protection for those with more global interests can be very useful.

General Comments
It will be appreciated that the commentary above is designed to answer most frequently asked questions about trade mark registration and trade mark searching. For more detailed advice please do not hesitate to contact our specialist trade mark advisors.

Watch Service
Once your trade mark has been chosen, cleared by the carrying out of full availability searches and an application

D Young & Co 2004

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