9th May 2013

Expert Advice from Abel & Imray

Danielle Cooksley from Abel & Imray lists the 9 things your trademark attorney does not want to hear.

1. “I want to register ENGINEERING SERVICES for engineering services”

Your trade mark should be distinctive and non-descriptive to be registerable. Descriptive or non-distinctive marks do not often effectively indicate the commercial origin of a service or product, which is the purpose of a registered trademark.

2. “I want a registered trade mark for our company slogan, Simply the Best?”

It is difficult to register slogans as trade marks, especially if they are common descriptive phrases or merely laudatory. Clever, unexpected or imaginative straplines are more likely to be protectable.

3. “I want a worldwide trade mark registration”

It is not possible to obtain a worldwide registration, but there are ways of registering a mark in more than one country in a cost-effective manner. A Community trade mark registration gives protection in all countries in the EU. The Madrid Protocol and Agreement allow you to file one application which at least initially covers lots of different countries, enabling considerable cost savings. This single application can lead to a separate registration in each country included in the initial single application.

4. “Trade mark searching is a waste of time. We’ll change our name later if we have to”

Trade mark searching should help identify third party rights that could stop you from using a name. Whilst changing your company name and rebranding is simple when you first start a company, it can be expensive and embarrassing several years down the line when your company is well-established.

5. “We’ll be alright. Our mark is CREEPY with an E, not CREAPY with an A, like in our competitor’s registration”

Trade mark registrations stop third parties from using the same and similar marks. Making small changes to names will sometimes not be enough to keep you out of trouble.

6. “I don’t need a trade mark registration. I have registered the company name and a domain name”

Neither a Companies House company name registration nor a domain name registration will be effective in stopping third parties from using a mark. A trade mark registration is far more effective.

7. “I’ve written a horrible letter to some company that’s using our trade mark and now we’re being sued”

When you write to someone about trade mark infringement, you have to be very careful about what you say. Otherwise the other side may have grounds for suing you for unjustified threats of trade mark infringement. Speak to a trademark attorney before sending any letters.

8. “I’ve paid the renewal fee on this registration six times”

There are many scams currently operating, some of which take money for putting your trademark onto an unofficial and worthless register and some of which offer to pay a renewal fee, but at huge costs. http://www.ipo.gov.uk/warning.htm

9. “My brother and I have been running the family business for years. Now he’s set-up on his own and he’s using the family business name”

Heart sink. These situations are complex, difficult to resolve and there are rarely any winners. Consider putting formal contractual arrangements in place in any business from the start, setting out what will happen in the event of a dispute, even if (or especially if) your business partners are close friends or family.

 

Abel & Imray provides commercially focussed advice on branding and trade mark matters. For further information on trade mark matters, please contact Danielle Cooksley, tel. 029 2089 4200, e-mail: Danielle.cooksley@patentable.co.uk. Danielle’s profile can be found here