Trade Marks

A trade mark is a means through which consumers identify YOUR products and services. Accordingly, a trade mark is a valuable business asset protecting your business reputation and goodwill.

A trade mark can be anything from a word mark to a shape, smell or musical jingle – effectively anything which is distinctive and is capable of contributing to your brand identity.

Trade marks can be unregistered or registered.

When you have significant levels of consumer recognition, an unregistered trade mark arises automatically at no cost to you. You should warn others off from using your unregistered mark by inserting a T symbol directly after each use of it. To stop someone from using an identical or similar mark to you, it is necessary to bring a passing off action. Passing off actions are difficult to prove, time consuming and costly. Accordingly, unless you apply to register a trade mark it can be difficult to prevent other businesses from using an identical or similar mark.

Trade marks are relevant to all businesses and not just to brand conscious businesses.
This is because registered trade marks give you stronger and clearer rights of legal action, as opposed to relying on only copyright and/or passing off. Owning a registered trade mark gives you the right to stop any business using a mark that is identical or similar to your registered mark in relation to goods which are identical, similar, and in some circumstances, not similar to yours. Therefore, a registered trade mark can be a secret weapon in a domain name dispute or a valuable adjunct to your businesses technology. You should put third parties on notice that your trade mark is registered by inserting a ® symbol directly after each use of it.

The cost of registering a trade mark is anything from £2,000 for the Community, £3,000 for the US and £1,000 – 2,000 for individual countries. There are also maintenance costs for the life of your brand, and these vary on a country-by-country basis.

It is advisable to conduct trade mark clearance searches in each of your key markets as early as possible in the branding process, and preferable at the conception stage. This enables you to check the availability of your preferred mark against potentially conflicting earlier trade mark rights (registered and unregistered) owned by third parties. A failure to conduct brand clearance searches could result in you and your licensees being sued for trade mark infringement on product launch, which is to be avoided at all costs.

Once you have registered trade marks, to leverage maximum commercial value from them, you should exploit them (usually through licensing) and monitor third party activities, by, for example, setting up a trade mark watching service. You should be prepared to litigate in the event that a third party is infringing any of your trade marks and refuses to cease infringing and/or settle. If you have a strong case and you win, you may be awarded damages by the Court to compensate for your loss. On the other hand, if your case settles before trial, your litigation arguments can give you scope to leverage favourable licence fees or royalties by way of settlement.

If you are sued for trade mark infringement or suspect that a third party infringes one your trademarks (registered and unregistered), we can advise on your chances of success, devise a litigation strategy tailored to your business model and where necessary litigate in the Courts.