Choosing a Trade Mark:
Some trade marks are easier to protect than others.
Registration must be refused if for example the trade mark conflicts
with some earlier right or is thought to be a simple descriptive
or laudatory term.
There is no legal obligation to register a trade mark. However,
the user of an unregistered mark can be prevented from continuing
or extending use by a later user who does secure a valid registration
in good faith. Also, it is, with certain limited restrictions,
the first applicant who will be granted registration of the trade
mark.
Therefore there are clear and powerful reasons for seeking trade
mark registration.
Clearance Searches:
A trade mark registration is infringed by unauthorised use
of the same or similar trade mark either on the goods covered
by the registration or on similar goods if there is likely to
be confusion.
Moreover, a registered trade mark which has become well known
in the United Kingdom will be infringed by the use of the same
or similar mark on totally dissimilar goods where the later use,
being without due cause, takes unfair advantage of or is detrimental
to the distinctive character or the repute of the well known registered
trade mark.
Therefore once a trade mark has been chosen it is very important
to conduct clearance searches to see if the trade mark is free
for use. We can readily conduct searches of the Trade Marks Register.
The Cost of Clearance Searches:
The cost depends upon the amount of time taken to conduct
the search and to analyse the results. Much depends upon the nature
of the goods 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 against a word mark will
be around £250.00 to £300.00 dependant on complexity. This includes disbursements 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.
Unregistered Use and Further Searches:
The user of a trade mark who can establish to the satisfaction
of the Courts that he has acquired an exclusive reputation can
seek to prevent others from trading in a manner likely to deceive
the public into thinking there is a trade connection, with resultant
damage to his business.
Unfortunately, there is no register of unregistered trade marks.
Therefore it is not possible to conduct exhaustive searches of
publicly available records to see whether proposed use will impinge
upon any unregistered rights claimed by a third party. Searches
against unregistered rights can be time consuming, expensive and
not totally exhaustive.
For this reason many clients rely upon their own knowledge of
the trade concerned, augmented by the Register searches which
we can conduct, to reach a decision on the commercial risk involved.
In our experience most traders are readily able to satisfy themselves
on this basis whether or not any risk involved is at an acceptable
commercial level.
Application Costs:
The next step is for us to prepare and file an application
to register the trade mark. Costs for this stage will be £350
for the first or only class of goods covered plus £100 for
each additional class of goods covered to include the applicable
Government Official fees.
Getting Acceptance:
If there are no problems it will cost £150.00 to get your
trade mark registered following application. However, not all trade marks are accepted straight
away. Therefore it is not possible to give a firm estimate of
the costs involved for this stage until we know what problems
are likely to arise.
However, a budget of about £500.00 will often take a trade
mark that has been objected to the point of acceptance or to the point at which it becomes
clear acceptance will not be secured or will be secured only on
significant expenditure.
Acceptance:
Once accepted, the application is published for opposition
purposes in the Trade Marks Journal. It lies open to objection
by third parties for a period of three months. At the end of this
period, if no objection arises, the mark is registered upon completion
of registration formalities.
Renewal:
Once registered, registration rights remain in force for a
period of ten years from the date of application. These rights
can be renewed indefinitely thereafter, at ten year intervals,
upon payment of the appropriate renewal fees.
All registrations handled by us are entered into our computerized
diary system, with a view to the proprietor being reminded to
instruct us to renew the trade mark in good time before renewal
falls due.
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LONDON