The complexity of trade mark law means that you need to know that your chosen advisor is fully equipped with appropriate skills, experience and qualifications to serve your interests. The below lists just a few of the reasons a Chartered Trade Mark Attorney is usually the best choice for such work:-
In the UK most trade mark attorneys have Chartered status and are regulated by the Intellectual Property Regulation Board (IPReg). This places an obligation on such attorneys to adhere to a Code of Conduct, and update their skills and knowledge via a programme of continuing professional development. IPReg also provides clients with a means of recourse in the rare event of any instances of professional misconduct.
Such is the importance placed on protecting the public interest in this field, it is an offence in the United Kingdom for anyone to use the title “Chartered Trade Mark Attorney” unless they appear on the official Register of Chartered Trade Mark Attorneys. You can find our entry in the official Register here. This qualification is therefore protected in that only those who are appropriately skilled and qualified it are entitled to use it. This protects you from bad advice. This is in direct contrast with so called “trade mark agents”, “trade mark specialists” and “trade mark advisors” (which are entirely unprotected terms) and who will often posses no trade mark specific qualifications at all.
Before you get to the stage of filing a trade mark application it can be important to get professional advice on whether your trade mark is actually available for you to use and register – this is basically a risk assessment of whether you might be inadvertently infringing anyone else’s earlier identical or similar trade mark rights by using your chosen brand name and attempting to register it as a trade mark.
We routinely carry out clearance searches of the trade mark registers (there are a few different registers which cover the UK), analyse the results and then provide written advice on the availability of a proposed trade mark, the risk of infringing any earlier third party rights and the risk of potential opposition to your application by the owners of earlier marks.
If all is well and you want to proceed to file your trade mark application, it is vitally important to get the specification – that is, the list of goods and services which will be protected by your mark – correct. As Chartered Trade Mark Attorneys we are trained to draft the specification with your business needs in mind to ensure that your trade mark, once registered, provides adequate protection for your growing brand. It is not generally possible to amend or add anything to an application once it has been filed and the risk of getting the application wrong is that you could be left with a trade mark which does not properly protect your brand or your business.
Once the application is filed it is scrutinised by an Examiner who can object to the mark itself or the specification of goods/services. Dealing with such objections can be difficult if you do not have a full understanding of the trade mark process and legislation. A key element of our service is providing professional advice on how to overcome any such objections and so allow applications to proceed to registration – as well as ensuring that formal deadlines for doing so are monitored and met.
Once the Examiner has accepted an application it is published for a 2 month period. During that time anyone who is concerned about the trade mark may choose to oppose it and try to stop the mark from being registered. Currently around 5% of all UK trade mark applications are formally opposed but many more are the subject of threatened opposition which requires a negotiated settlement. Oppositions, and threats of opposition, are much like mini court procedures, so it can prove extremely difficult for someone inexperienced in trade mark law to be able to properly defend the application and submit relevant legal arguments as to why a mark should be registered. We are experts on the different points of law and can offer detailed legal arguments in defence of your application in order to overcome any such opposition.
Once your mark is registered it is important to know what to do if someone tries to copy it, or launch a similar business under a similar name. Again, we can offer valuable advice on the steps to take to protect your mark against unauthorised third party use and can help you to successfully resolve such issues.
A trade mark registration will provide a legal basis for allowing you to prevent others from registering an identical or confusingly similar mark for identical or confusingly similar goods/services, but how will you know that anyone is attempting to register such a mark? Some clients mistakenly believe that they will be notified of this by the trade mark registry; however, that is often not the case. For this reason, many brand owners choose to set up a trade mark watching service in order to find out if anyone is trying to register a conflicting mark and to allow them to take action quickly if they do. This can result in huge cost savings, particularly for clients with interests overseas, since many trade mark systems provide a short opposition period which allows rights to be challenged more easily at that point than if they were challenged at a later date. This is also something that we can set up and monitor for you.
Once registered, in the UK it is necessary to renew your mark every 10 years to maintain your rights in force. We will monitor the renewal deadline and contact you well in advance to obtain your instructions, and attend to renewal on your behalf – one less thing for you to have to remember!
As your business grows you may perhaps decide to launch your product or service in other countries outside of the UK, and we can take care of this too. We can handle trade mark searches and filings all around the world, and have an extensive network of vetted foreign associates who we can work with for important local knowledge and advice.
It is possible to self-file a trade mark application without professional assistance. However, the legal and procedural complexities are significant and should not be underestimated. In our experience it is very rare for a self-filed application to adequately secure your position. In particular, they rarely provide a commercially useful scope of protection. It is also worth bearing in mind that if self-filing applications you do not benefit from any of the above strategy/commercial advice. Such applications often lapse irrevocably due to missed deadlines and / or misunderstandings of the procedure. Indeed, there is possibly only one scenario where a self-filed application might be appropriate (and this does arise from time to time) and that is where the application is being filed on a purely speculative basis and where no value is attached to the trade mark – or is ever expected to be attached to it. For all other cases, where there is either already value attached to the trade mark or there may be in the future, professional assistance from a Chartered Trade Mark Attorney is an investment which pays for itself many, many times over.