Q. I’ve been threatened by another company about use of my Trade Mark. Help!
Firstly, do not panic. The letter may be very unpleasant, and demand lots of action and payments from you. Do not respond to it in any way, but do act urgently. We deal with these approaches frequently, and things are mostly not as bad as they first appear. Please get in touch with us and we will do our utmost to help you.
Q. What is a Trade Mark?
A trade mark is a legal right which gives the owner the option to sue, in Court, a party who uses (including manufacturing and selling) the mark on their goods or services without authorisation. In some cases action can be taken against similar marks used on similar or even dissimilar goods or services. If such a Court action is successful, the owner may be granted, for example, damages and/or a Court Order requiring the other party to stop using their mark.
Q. How do I obtain a Trade Mark Registration?
Trade Marks are territorial, so a registration in one country does not grant you rights in another. A Trade Mark is obtained by applying to the Trade Mark office in the country (or region) of interest. In most countries, the application procedure includes an examination and marks which are already applied for and which are identical or similar to the mark applied for can be serious obstacles to registration or use of the mark of interest.
Q. How long does it take to obtain a Trade Mark?
This varies from country to country, but in general it may take 5 months to 18 months. Some territories have extreme delays, but in the United Kingdom and most European territories, the procedure takes less than a year. The important thing is to file the application, as the rights are effective as of the date of application.
Q. How much does it cost to obtain a Trade Mark?
This varies from country to country and from case to case. It is also affected by the route via which protection is pursued and the variety of goods or services applied for. In general, the process of obtaining a trade mark in the UK may cost anything from about £700 to £2,000 (plus VAT where payable), over the course of the application procedure. We can give you more precise cost estimates based on your requirements.
Q. In which countries should I apply for Trade Marks?
Naturally, it is most important to apply in the territories that you will be using the mark. It is also worth considering future expansion plans, especially if they involve Europe as there are ways to ensure the process is cost efficient. Potentially large territories such as the USA should be considered, especially if the mark is an English word.
Q. A competitor has just started using my mark, and filed an application. What can I do?
There are ways to object, and obtain the rejection of the mark applied for, but the best option is to have already applied for the mark yourself. We can provide you with your options and costs, although these are obviously dependant on the details of each case.
Q. Can I protect my mark for all goods worldwide?
Yes, but the cost would be prohibitive. We have dealt with worldwide filing programmes, and the costs are close to £350,000 for a single product.
Q. Should a Search be Conducted Before Filing a Trade Mark Application?
It is always advisable to conduct a search, but there are circumstances where it makes more sense commercially to file an application first. If you would like advice about this, please let us know.
Q. What happens after registration?
Trade Mark registrations can last forever, subject to paying renewal fees every 10 years or so. We can advise how to use (and how not to use!) your Trade Mark to prevent it from being attacked or invalidated.