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.

Trade marks 101: Part 1

In this two part series, Perri Byrne and Liam Faulkner are going to take us on a whistle stop tour of trade marks. Here, in Part 1, Perri outlines what a trade mark is. She then goes on to explore the benefits of registration. In Part 2, Liam will explain how to register a trade mark.

What is a trade mark?

A trade mark is defined under s.1(1) Trade Marks Act 1994 as ‘any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of another’. In other words, a trade mark enables consumers to identify goods or services as originating from a particular company or relating to a certain product or service. Trade marks typically take the form of words or logos, though it is possible to protect more unusual forms of trade marks such as colours, slogans, shapes of products or packaging, sounds and even smells.

Trade marks may be registered or unregistered. Registering trade marks usually offers the best protection but unregistered trade marks can be enforced in certain circumstances under the law of passing off.

It is important to distinguish trade marks from other types of registration such as domain names or company names. Registering a company name at Companies House does not provide trade mark protection for that name. If a person registering a company name wishes to prevent third parties from using an identical or confusingly similar name in the course of trade, it is important to file a separate trade mark registration to better protect the name.

What are the benefits of owning a registered trade mark?

If your register your trade mark, you are entitled to:

  • sell and license the brand
  • take legal action against anyone who uses the brand without permission, including counterfeits
  • use the ® symbol next to the brand – to alert others that it is a registered mark and warn anyone against using it.

For more information about trade marks, we recommend you visit the Intellectual Property Office website.

 

PerriThis blog post is written by Perri Byrne. Perri is a MLaw student working in a business & commercial firm within the Student Law Office at Northumbria University. Upon graduation she hopes to obtain a training contract within a commercial law firm. Meanwhile, she plans to carry on her work at the Citizens Advice Bureau and to undertake a paralegal position in order to enhance the skills which she has developed.

Clinic Collaboration with qLegal

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This year, we were delighted to take part in the first ever business law clinic collaboration of its kind.

Charlotte and Joseph from the Student Law Office provided trade mark advice to Thomas and Youn from qLegal.

qLegal provides free legal advice, workshops and resources to tech start-up companies and entrepreneurs. Those legal services are provided by high calibre postgraduate law students under the guidance of legal professionals from collaborating law firms and academic staff at the School of Law. You can find out more about qLegal here.

The project involved the students travelling to their respective clinics and engaging as client and advisor. It culminated in the team completing an application to register the qLegal trade mark – see the photo above! After submitting an application the students engaged in a round-table discussion about their experience of the project – which was overwhelmingly positive. Both parties were also able to reflect on the differences between the clinics: assessed/non-assessed, compulsory/voluntary, postgraduate/undergraduate students. Our hosts also kindly took us on a visit to the Royal Courts of Justice and the Law Society!

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We would like to thank the team and students from qLegal for being such wonderful clients and we look forward to many collaborations in the future. You can also read qLegal’s reflections on the project here.

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:

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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.

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