If you love your brand then we’re pretty sure that you won’t want any part of it to be stolen from you – however, the world of trade mark law can be tricky to navigate. We talk to Danielle Cooksley from Abel & Imray, and get an answer to the question ‘how can I protect my brand?‘
What makes your business unique? What marks you out from the rest of the industry? What do people think of when they hear your company name? It could be your people, your business ethos or your stellar brand identity and intellectual property (you know, all the ‘stuff’ that makes up your brand – like your logo, name, or even a signature sound).
So what do you do if you find out another person or organisation has started calling your intellectual property (IP) their own? Or begun using a logo/name/design that looks far too familiar? That’s where trade mark law comes in.
As brand creators and digital guardians, we understand how important brands are but when it comes to legally protecting your brand, we knew we needed to get expert insight into this sometimes tricky arena by talking to IP expert, Danielle Cooksley, Senior Associate at Abel & Imray…
Let’s begin …
So, what actually is ‘intellectual property’?
Intellectual property can be thought of as a creation of the mind. For example an invention, a design, a painting, a short story, a symbol, a name, etc.
What exactly is a ‘trade mark’ then?
A trade mark is a sign that you can use to distinguish your business’ goods or services from those of other traders. Typically trade marks are words or logos, or a combination of the two. However a trade mark can also be a phrase/slogan, a sound, a colour, a shape or a scent.
“Put simply, registering your trade mark makes it easier and far less costly to take legal action against anyone who copies or steals it!”
Why should I register my trade mark?
Registration is not compulsory and in some countries, including in the UK, you can establish “common law” rights in a mark based solely on your use of the mark in trade. However, a Trade Mark Registration provides a legal presumption of your ownership of a mark and your right to prevent others from using the same, or a confusingly similar, mark for a similar products or service.
Put simply, registering your trade mark makes it easier and far less costly to take legal action against anyone who copies or steals it! It also makes it far harder for someone else to come along later and try to stop you from using your mark.
So, if my company name is registered at Companies House, surely that means no-one else can use it, right?
A common misconception is that a trade mark is the same thing as a company name. Not so. Registration of a company name only stops a third party from registering their company under the same name. It does not stop a third party from using your company name as their trade mark.
What will happen if someone starts using my company name/logo and I DON’T have a registered trade mark?
You may not be able to stop them!
The only action available in the UK to protect an unregistered trade mark is a ‘passing off’ action. In short, unless you can prove a case for passing off, it will not be possible to prevent a third party from using your trade mark in the course of trade in the UK.
On a practical level, it may prove difficult to persuade third parties that you possess sufficient common law rights to sustain a passing off action and as a result they may be less inclined to engage in negotiations with you.
“If a competitor or other company starts to use an identical or confusingly similar mark, you can simply wave your Registration Certificate.”
What will happen if someone starts using my company name/logo and I DO have a registered trade mark?
A Trade Mark Registration provides a legal presumption of your ownership of a mark and your right to prevent others from using the same/confusingly similar mark for the same/similar products or services.
That means that if a competitor or other company starts to use an identical or confusingly similar mark, you can simply wave your Registration Certificate and – unless or until the other side can prove otherwise – you will be deemed to have legal rights in the mark.
I have been trading with my company name, logo and identity for over a year. If someone starts using those things can’t I just prove that I had them first?
If your business has been using a trade mark in the course of trade for a short period of time (typically, for a period of less than five years) and/or has only used the trade mark in a small part of the UK, you are unlikely to be able to prevent a third party from using your trade mark despite you being the first to use the mark.
A passing off action is notoriously difficult to prove – especially where the mark is in its infancy.
If I don’t register my trade mark can another company register it, even though I started using it first?
If you have used your unregistered trade mark in the UK for some time, this would not prevent a third party from obtaining the relevant registered trade mark. It would then be up to you to challenge that registration in reliance on your earlier unregistered rights.
If someone registers your trade mark before you do, the worst case scenario is that the third party could prevent you from using your trade mark. The best case scenario is that you will incur considerable legal costs sorting the problem out.
The protection and use of trade marks is a complex area of law and there are distinct advantages in using a professional.
How much will it cost?
Costs are very much dependent upon the countries in which protection is sought, and the range of products and/or services for which the trade mark will be protected.
However, as a very rough guide you could expect to pay between £1,000 and £1,200 plus VAT for a straightforward registration in one class in the UK.
Do I need to hire a professional to register my trade mark?
You don’t have to use a trade mark attorney – however, the protection and use of trade marks is a complex area of law and there are distinct advantages in using a professional.
If your trade mark is a valuable asset – in which you have invested significant time and money – we highly recommend that you engage a Registered Trade Mark Attorney.
Danielle Cooksley is a senior associate at Abel & Imray who are a leading firm of UK & EU patent & trade mark attorneys with offices in London, Cardiff & Bath. They have been offering intellectual property advice since 1871.
Clients range from multinationals to smaller companies and they advise them in all aspects of obtaining, using and enforcing patents, registered trade marks, registered designs and other related rights.
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