Stay Protected: Use the time at home to focus on your Intellectual Property

We have received many calls from business owners who are sat at home and working on matters that have taken a back seat because of a busy schedule. Now they wish to move forward with some matters such as protecting intellectual property like trade marks. This is then followed by many questions about process, what it means and cost.

I have set out below a hand full of questions that are commonly asked before moving forward to the finer detail.

1. What is a trade mark?  A trade mark can be any word or sign that identifies you as the owner of your goods or services. This in turn will make it clear to consumers that it belongs to you. … Once in use, your trading reputation and goodwill will be attached to your business. It is your most prize asset and needs protecting.

2. Do I have to conduct a search?   Before choosing your branding or business name that you wish to send out to the world you should conduct a search to ensure that it is not already being used by a third party. You will also need to do this in the territory that you intend to trade in because trade marks are territorial.

3. What sort of things will the search results show?   In this day and age the likelihood of developing a trade mark which is so unique that it has never been used before is unlikely. Just make sure it is unique to you and does not simply mimic another mark. It also cannot just describe the goods and services that you are marketing under. All of the results will show some similarities and if none are highlighted then you may need to consider if there is a reason that no one has been able to register a mark with wording such as yours.

4. What does it mean by class specification?  The trade mark will be categorised in one or more classes to identify the classification of goods or services that the mark is being marketed under and there are 45 classes in total.

5. Where do you register your trade mark?  As trade marks are territorial you need to consider where you will be marketing the goods and services such as UK, EU or US maybe but it could be anywhere in the world. When you have worked out where you wish to file, this will then assist with highlighting the sort of fees which can range from a few hundred pound to thousands.

6. What are absolute grounds for refusal?  The first step is for the examiner to consider the TM registrability. If it deems your mark to be descriptive of the goods and services or lacking in distinctive character, it will reject the application and you will lose the fees that were paid.

7. Relative Grounds for refusal?  Once the examiner is happy that your mark has the potential to be registered, the mark will then enter the publication period. It is this time that any third party who has a registered trade mark is given the opportunity to oppose your application. Essentially, it would be argued that the two marks are so similar that there is the potential likelihood of confusion from the public.

8. How long does it take?  In the UK the process takes about 3 months if there are no objections. The examiner usually takes up to 14 days and the publication period will last for 2 months in the UK. This time frame varies depending on the territory.

9. What next?  The mark will then be entered on the trade mark register and the owner will be sent a nice certificate for them to frame and put on the wall. More importantly this will allow the owner to show the (r) symbol next to the mark which will warn others of the registered rights. This mark will then allow the owner to enforce this right on anyone who attempt to infringe it.

10. How long does the trade mark stay registered for?  Once it has succeeded through the different stages, it will be entered on the trade mark register for a 10 year period before it needs renewing.

Usually the biggest challenge for those who are filing a trade mark is to fight off others who are trying to enforce their registered rights. Now is a good time to file because some companies are being forced to put their hands back in their pockets to save money which means they may have no choice but to allow some applications in different territories through the net as they do not have the financial resources behind them to file a notice of threatened opposition let alone formally oppose it.

Do not hesitate to protect your IP and do not assume that it is not important to spend money on your IP.  It could prove very costly in time and prove disastrous if you are forced to re-brand.

Stay Protected. Contact us for further information.

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