Trade Marks 101: Part 2

In this two part series, Perri Byrne and Liam Faulkner are taking us on a whistle stop tour of trade marks. In Part 1, Perri explained what a trade mark is and the benefits of registration. Here, in Part 2, Liam looks at how to register a trade mark.

In the highly competitive business world that we live in, the well known phrase “dog eat dog” is an understatement to say the least. If it wasn’t hard enough having to fiercely compete with other businesses that aim to conquer the market, there are new businesses popping up round every corner who also have the burning desire to succeed. However, there are tools available to all business owners which can potentially propel them to flourish in even the most cutthroat business environments! You need to look no further. One essential tool that is readily available to you is the registration of your trade mark. If you’ve had the tenacity to create such a creative brand, then why not make sure it was protected?

How can I make my application to register a trade mark?

You may have imagined the registration process entailing a damp old office down a corridor of your local town hall where you are presented with stacks upon stacks of dusty books containing previous trade marks, in which you have to tediously sort through to only find out that someone had registered the same trade mark ten years before you. Thanks to the 21st Century, this is not the case at all.

You will make your application to the UK Intellectual Property Office (click here for more about the IPO).

There are three methods available when applying to register a trade mark. Whichever method you choose, you will need to identify the “class” or “classes” that you wish to register it under. This is essentially the field/fields your trade mark will have protection in, for example “education” or “advertising”.

1)           Firstly, there is the standard paper service (post) which costs £200 (for one class of goods/services). There is a fee of £50 for each additional class.

2)            The second method is an online application, which costs £170 for one class, with a further £50 fee for each additional class.

3)            The final method is the ‘Right Start’ scheme which costs £200 (for one class) and is also an online service. You will pay only half of the fee with your application (for instance, if applying to register under one class, this would be £100). If the report is successful you may then proceed with the registration and the remainder of the fee will then be payable.

With each of these methods the Intellectual Property Office will email/post the examination report to you within 20 working days.

What happens after the application?

If the examiner has no objections to the registration of the mark, you will be published online in the Trade Marks Journal for a period of 2 months. This is open to public inspection in which, interested parties may oppose the registration. As long as no objections arise during that period, then the trade mark will be registered and a registration certificate will be issued to you. Consequently, you will now be the happy owner of a registered trade mark!

laimThis blog post was written by Liam Faulkner. Having studied intellectual property previously he has found it very interesting to apply this knowledge to real life scenarios. In his spare time he enjoys playing football, and after graduating he hopes to either secure a training contract or work as a paralegal.

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FIRST class legal advice

SLO FIRST Face to Face 2

L-R, Charlotte Windebank, James Warnock, Caroline Theobald, Jaimie Hill and Victoria Gleason

At Northumbria Law School’s award winning Student Law Office, students are exposed to working with real clients including dynamic local businesses, under the supervision of qualified solicitors.

Current law Students James Warnock and Jaimie Hill have recently been assisting one such company, FIRST Face to Face Ltd, by providing it with free legal advice and documentation at an important stage in its development. FIRST is the brainchild of founder Charlotte Windebank and was set up in 2014 with the aim of establishing a network of business, industry and academia to promote young people’s future employment and enterprise opportunities.

The company has been going from strength to strength and Charlotte’s entrepreneurial spark has recently been recognised by Maserati and the Centre for Entrepreneurs as she was listed in the Maserati 100 – a list of the most successful business leaders actively supporting the next generation of entrepreneurs.

FIRST provides a networking environment in which business professionals and aspiring entrepreneurs can establish vital connections, as the company’s motto stresses, “all new business starts with a conversation”.  The company has worked to deliver exciting projects and events to a wide range of clients and partners and also works closely with established local networking business Bridge Club, headed up by Caroline Theobald who is also a director of FIRST.

One recent FIRST project involves working  with ‘NEETS’ (Young Persons Not in Education, Employment or Training) in conjunction with Sunderland City Council, and aims to get 16-18 year olds interested in a career in IT. Another involves FIRST providing mentoring support to NUOVO, Northumbria University’s Enterprise Society.

With FIRST going through an important stage of growth and development, Charlotte thought the company would benefit from obtaining some legal advice and a contact recommended that she get in touch with the Student Law Office at Northumbria University. The Student Law Office provides free legal advice to the public in a range of different legal areas including business and commercial law.

Charlotte said of the service:

“The Student Law Office was engaged to provide FIRST with advice about branding and intellectual property, its website terms and conditions and its ongoing filing and administrative requirements. Given the strong social media and networking focus of the business it was great that the students were able to work closely with FIRST to ensure the website terms were robust whilst fitting with the overall ethos of the company. I was really impressed with the service the Student Law Office provided”.

Victoria Gleason, the qualified solicitor supervising the students’ work added:

“It is great that James and Jaimie have had the opportunity to work with such an inspiring business and to put their legal knowledge into practice. I know they have found it great preparation for their legal careers and that Charlotte has even been kind enough to provide some networking and careers advice to them in return. I think this collaboration between the Student Law Office and FIRST highlights that the North East is a brilliant place to study, work and start a business.”

Keeping yourself informed in the information age: a quick guide to copyright

The 21st century is an increasingly technological era, and it has become all too easy to break the law with just a few misguided clicks. With personal computers in every home (perhaps served by super-fast, fibre optic broadband) and mobile phones that provide us with 4G connections while we’re on the move, it is more important than ever to be aware of copyright law. This is because, thanks to the principle of strict liability, ignorance is no defence.

What is copyright, and why should you be aware of it?

Copyright is quite a novel form of protection for intellectual property – notable examples of which include songs, films, photographs and literary works. Whereas entrepreneurs seeking to protect their brand by way of trade mark, or their product by way of patent, will find that there are applications to be made, and registration fees to be considered, copyright protection applies automatically. When an artist creates a copyrightable work, their rights to that work are protected without them having to take any formal steps, or pay any fee.

Another potentially startling fact about copyright protection is that it generally lasts for a period of 70 years – far longer than the maximum term of an expensive patent. Given that copyright is an automatic form of protection – which lasts for the better part of a century – it is more than likely that every song, video and photograph you encounter online is protected by copyright. Being aware that each piece of content you come across is someone else’s intellectual property is the first step towards ensuring that you respect their rights.

What do we mean by “copying”?

Copyright protection may be free, but it is comprehensive. “You get what you pay for” is not a maxim to be bandied around here. Where an item is protected by copyright, the law not only prevents anyone other than the copyright owner from copying that item, but also prohibits several methods of ‘communicating’ that item to the public. This includes electronic methods of sharing, such as uploading files to a website. Failure to abide by these laws may result in an injunction – meaning you’ll be compelled to remove the image (or other item) you have shared – or, more seriously, financial penalties.

Can you get a licence?

Where an artist has rights of ownership over a copyright work, they might choose to provide third parties with a licence to use that work. Often, the owner will charge this third party a licence fee. This allows the owner earn money for the use of the work, without losing their rights to the work as a whole – for example, a photographer might sell rights to their work to a magazine, or newspaper publisher. If you infringe copyright, the financial damages you’ll be made to pay will often reflect the cost of the licence fee you would otherwise have had to pay to the owner.

The dangers of social media

Given the recent popularity of social media platforms such as Instagram and Tumblr – which rely on the sharing of user-generated content – it has perhaps become easy to get the impression that sharing is a carefree affair. However, the law makes it very clear that it is no defence to say that you were unaware that your actions were unlawful. In one case, it was said that if a blind man were asked to photocopy a set of documents, without being informed of the contents, he could still be found liable for copyright infringement if he copied a copyright work as a result.

It is hoped that this highlights the importance of keeping yourself informed, and that by bearing in mind the principles of copyright law you can make sure you won’t run into unnecessary difficulties online. Think before you share that video, or post that photograph.

This blog post was written by Calvin Walker. Having advised entrepreneurs as a member of a Business & Commercial firm in the Student Law Office, Calvin has developed a particular interest in the areas of IP and IT law. After graduating he is hoping to secure a training contract with a commercial firm in order to build upon his experiences in the SLO.

Calvin

10 TED talks to make you commercially aware

Commercial awareness is both a flexible and elusive term.  Perhaps it could be defined as the following:

“an awareness of business trends, strategies , successes, failures, threats, opportunities , events and a knowledge of entrepreneurship.”

For commercial lawyers, possessing the quality above is essential. A lawyer in a commercial context must have a firm grounding in both the legal and business marketplaces. An awareness of the competition and the growing trends within the legal sector is critical for a firm that wants to keep pace. Equally, as every client is a business, a solicitor must have a thorough knowledge of the relevant industry so that he can offer relevant, effective, and future-proof advice to a client.

A fact that employers often stress also emphasises the importance of commercial awareness; a law firm is a business. Therefore, an understanding of what makes a business successful, and the challenges it may face along the way, is an important tool for any prospective solicitor.

Many students find it difficult discovering ways to become commercially aware, many reaching straight for the business sections of the newspaper or going online to read the latest commercial and legal bulletins. However, there are much easier ways. Podcasts, blogs and apps perhaps make it easier than ever before to passively absorb business-sense. Less tedious than a broadsheet and something that you can tackle on the way to University.

A similar, and equally brilliant, untapped resource are TED talks. TED talks are video lectures, ideas and presentations. Better yet, TED talks are a great resource for picking up a subtle, and perhaps deeper understanding of commercial awareness. Listed below are ten great talks, focused on a range of general commercial issues, to get you started and send you on your way to becoming a guru of the commercially aware.

  1. Joseh Pine – What consumers want
  1. Margaret Steward – How YouTube thinks about copyright
  1. Ray Anderson – The business logic of sustainability
  1. Ricardo Semler – How to run a company with (almost) no rules
  1. Drew Curtis – How I beat a patent troll
  1. Harish Manwani – Profit’s not always the point
  1. Michael Porter – Why business can be good at solving social problems
  1. Nigel Marsh – How to make work-life balance work
  1. Yves Morieux – As work gets more complex, 6 rules to simplify
  1. Phillip Evans – How data will transform business

This blog post was written by James Warnock. James is currently studying the M Law degree at Northumbria University and is working as a student advisor for business and commercial law within its Student Law office. On graduation he hopes to secure a role which will allow him to apply the law-based skills he has acquired within a commercial context, whether this is in-house, in private practice or in a wider business context. He aspires to work alongside unique and passionate forms of enterprise.

James Warnock

Don’t be caught out by fake business registers!

Have you ever registered your business name on a so called ‘legally protected business register’?

The government has recently warned that many people have received unsolicited invitations from companies offering services to help them protect their business or trade name in return for a fee.

These invitations are often official-looking and many people feel obliged to register with them to protect their business name. The fees are greatly in excess of official fees. There is usually a register, but sadly that register has no legal status whatsoever. It is merely a list. Often the small print on the invoice will say this, but once fees are paid it is too late.

There are sadly many companies purporting to be official UK company directories/registers. Companies House is the only official register for companies. It is a reliable and legitimate register of information regarding all registered companies in the UK. A company registered with any another “register” will not be considered a registered company.

If you are concerned about someone copying your trade name or logo, you should consider protecting it as a registered trade mark. Please be aware that the only official place to register a trade mark in the UK is via the Intellectual Property Office. The Intellectual Property Office has recently taken action against companies such as “Patent and Trademark Office” and “Trade Mark Renewal Service Ltd”, who were sending businesses letters telling them to renew their trade marks.

The Intellectual Property Office is the only official body which can issue a reminder to renew a UK trade mark. If you receive a reminder to renew your trade mark it will look like this:

IPO

If you receive a misleading invoice the Intellectual Property Office would like you to let them know. Contact them at: misleadinginvoices@ipo.gov.uk.

Additionally, there is no official register for copyright protection. Copyright works are protected simply because they are copyright works, without any need to undergo formal registration. Websites offering registration of your copyright will be a scam website and will not have any legal standing.

So, if in doubt please contact Companies House or the Intellectual Property Office, or seek the advice of a solicitor. It may save you unnecessary costs. The Student Law Office has advised clients in the past on this issue – please see this page for more details of our free service.

This blog post was brought to you by Alex Tomlinson and Bethanny Bamber.

Alex (left) and Bethanny (right) are both currently studying the MLaw degree at Northumbria University and are working in a Business & Commercial firm within the Student Law Office. In the future, Alex plans to secure a training contract and hopes to specialise in intellectual property. Bethanny has recently been offered a training contract in the consumer litigation department of a high street firm in Carlisle.

AlexBeth