Eric Ramage Answers Your Questions

WHAT IS A TRADE MARK?

WHY SHOULD I REGISTER MY TRADE MARK?

MUST I REGISTER MY TRADE MARK?

WHAT SHOULD I DO WHEN I HAVE CHOSEN MY TRADE MARK?

HOW MUCH DOES THIS COST?

WHO CAN OWN OR REGISTER A TRADE MARK?

WHAT IS A TRADE MARK ATTORNEY?

WHAT IS THE DIFFERENCE BETWEEN PATENTS, COPYRIGHT AND TRADE MARKS?

MUST I USE A TRADE MARK ATTORNEY TO REGISTER MY TRADE MARK?

HOW MUCH DOES IT COST TO REGISTER A TRADE MARK?

In Brief...

THE INSTITUTE OF TRADE MARK AGENTS
TRADE MARKS - A CHRONOLOGY
REGISTERING YOUR MARK IN EUROPE

ABOUT INTELLECTUAL PROPERTY

TRADE MARKS AND THE INTERNET

WHAT IS A TRADE MARK?

A trade mark can be any sign which distinguishes the goods or services of one undertaking from those of others. It can be a word or a picture. It can be a shape of a container. For example, we registered the JIF lemon for lemon juice, and the MAGIC MUSHROOM mushroom shape for airfreshener products. It can be a colour or a combination of colours. We have worked on protecting a number of colour combinations for various clients..

WHY SHOULD I REGISTER MY TRADE MARK?

Two reasons. Registration grants a statutory monopoly to use of the mark. You can use the registration to prevent others from using the same or similar mark on the same or similar goods or services. Owners of well known marks can even stop others from using their mark on totally different goods. Also, probably more important to the smaller trader, the first person to register a trade mark in good faith can use it to stop someone who started to use the same or similar name earlier but who didn't register it.

MUST I REGISTER MY TRADE MARK?

The problem is that under the Trade Marks Act of 1994 it is the first applicant who is deemed entitled to any registration not necessarily the first user. Therefore, I cannot really advise anyone to use a trade mark on an unregistered basis because if someone else did get a later valid registration, that could be used to prevent further use of the unregistered mark.

WHAT SHOULD I DO WHEN I HAVE CHOSEN MY TRADE MARK?

Once the new trade mark has been chosen, it is very important to get a qualified professional to conduct clearance searches to see if the trade mark is free for use. As discussed earlier, the statutory monopoly granted by trade mark registration will be infringed by unauthorised use of the same or similar trade mark in respect of the same or similar goods or services. The main mistake the amateur searcher makes is to consider only whether anyone has registered exactly the same mark and not if there is something similar. This is dangerous. Companies like McDonald's guard their trade marks very jealously indeed. They are likely to be very unhappy about any trade mark beginning Mc or Mac, especially in the foods classes. We spent many years battling with them to prove that our client McChina was entitled to use that name. Moreover, a registered trade mark which has become well known in the United Kingdom will be infringed by use of the same or similar mark on totally dissimilar goods where the later use takes unfair advantage of or is detrimental to the distinctive character or the repute of the well known registered trade mark. With this in mind we regularly conduct searches of the Trade Marks Register in the United Kingdom and in most other countries around the world on behalf of our clients.

HOW MUCH DOES THIS COST?

The cost of such searches depends upon the amount of time taken to conduct the search and to analyse the results. Much depends upon the nature of the goods or services to be covered and the resultant complexity of the search report. It is not possible to give a firm quotation but as a general guideline the cost of conducting a register search in the United Kingdom will be around £250.00 to £300.00 dependant on complexity. These costs include disbursements incurred in search fees and our services for analysing and advising on the resultant report. If the trade mark is a fanciful logo it will be prudent to search against that logo also which may further increase costs.

WHO CAN OWN OR REGISTER A TRADE MARK?

There is no restriction. We work for one man businesses, for large financial institutions, for charities. Even for local radio stations. We have registered the "Mr Bradford" and "Mr Bingley" logo for the Bradford and Bingley Building society; the PARKINSON'S logo for The Parkinson's Disease Society and the SEEABILITY logo for The Royal School for the Blind, and we have advised County Sound radio on protecting their mascots.

WHAT IS A TRADE MARK ATTORNEY?

A trade mark attorney is the courtesy title given to a registered trade mark agent. That is someone who is qualified and registered to practice as a trade mark agent. The Institute of Trade Mark Attorneys was appointed under the 1988 Patent Design & Copyright Act to control the Register of Trade Mark Agents and to administer the examinations for entry on to the Register. A Trade Mark Attorney acts for and advises traders in the law relating to the protection of trade marks and design rights. A Patent Attorney acts for and advises traders in the law relating to the protection of technological inventions, and design rights.

WHAT IS THE DIFFERENCE BETWEEN PATENTS, COPYRIGHT AND TRADE MARKS?

Patents protect technological inventions. Design Rights protect the appearance of mass produced goods. Copyright protects literary, artistic and musical creations. Trade marks distinguish the goods or services of one trader from those of others. Patents, Design Rights and Copyright give protection for limited periods. Trade mark rights can be renewed indefinitely. A trade mark is a powerful marketing tool. Consumers buy branded products. A trade mark stamps a business's reputation on its product. Consumers trust reputations which they know.

MUST I USE A TRADE MARK ATTORNEY TO REGISTER MY TRADE MARK?

Just as there is no legal compulsion to use a solicitor to draft your will or to use a barrister to defend you in Court, there is no legal requirement to use a registered trade mark agent to represent you or advise you. However, there are distinct advantages in doing so. The modern trade mark attorney is qualified by rigorous examination covering Trade Mark law and practice. A skilled trade mark attorney knows how to present your case to its best advantage to secure the maximum protection for your trade mark. Trade mark attorneys advise on many aspects of the law relating to trade marks and related issues of design rights and copyright. Those who are members of The Institute of Trade Mark Attorneys are trained and knowledgeable in Trade Mark law and practice in countries outside the United Kingdom and can advise how best to protect your trade mark assets abroad.

HOW MUCH DOES IT COST TO REGISTER A TRADE MARK?

That depends upon a number of factors which range from which trade mark attorney you use (London firms with their higher rent and rates might be more expensive) to how complicated the case is. . I can only speak for myself. Through us, it will cost £350 for a basic application covering only the United Kingdom. To register a trade mark as a European Community trade mark is likely to cost at least £2000.00  including all official fees, but that is good value when you consider it covers all the countries of the European Union by means of a single registration.