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A trade mark is normally a word or logo or combination of both that is associated with certain goods or services giving rise to a brand value. Registered trade marks give the owner a monopoly right to use that name or logo and the right to prevent identical or similar trade marks being used for similar goods and services. It can therefore be a very valuable right.
This article sets out some essential points that any business should consider before applying for a trade mark.
Careful selection of the new trade mark
The business should ensure that:
Initial searches/due diligence
Before an application is made and costs incurred, a number of relatively simple and low cost searches should be carried out to assess whether or not the intended trade mark is likely to be granted.
We (or the business) can carry out an initial free online search of the UK Registry and normally a 30-60 minute search will indicate whether there is likely to be any problems; the initial online search can be supplemented by a formal registry search where required; the business should also carry out a general internet search against the intended trade mark to see if third parties are using a confusingly similar unregistered mark.
Assuming the searches do not indicate any similar existing marks, the application can be made. If there are existing similar marks, they will need to be considered further and, dependent on the specific facts, the business should either change its intended mark or take a proactive approach by contacting the existing trade mark owner(s) to see whether an agreement (often referred to as a "Co-existence agreement") can be reached whereby they agree to the application - this is often possible where the underlying products and services are not in competition.
If keeping cost to a minimum is essential, a UK trade mark application through the RightStart system is possible whereby half the application fee is deferred.
The application is checked in the UK by an examiner and if there are no objections from the examiner, the application is then "published", allowing third parties 2 months to claim that the new mark is too close to their existing trade marks. After the opposition period has ended without objections, 2 months after publication, the trade mark will then be formally granted.
John Warchus, Partner, Clarkslegal LLP
Tel: 0118 953 3980 Email: JWarchus@clarkslegal.com
This article summarises the procedure/issues involved in registering a trade mark in the UK and, as such, should not be relied upon. Formal advice should always be taken before embarking on a course of action.
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