We Specialise in the protection of your intellectual property rights

Trade Marks

Most, if not all, businesses adopt a trade mark to identify the services they provide and/or the products they sell. A trade mark enables your customers to recognise services and/or products that originate from you and the value of a trade mark generally increases over time as goodwill is built up in the mark through advertising and/or sales. A trade mark is often a company’s most valuable intangible asset and, as such, should be protected.

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It is a frequent misunderstanding that registering a company name with Companies House will grant protection for that name. This is not the case. Obtaining a trade mark registration for your mark entitles you to exclusive use of that mark for the goods/services covered by such registration. Even if your mark is not registered, legal action may be taken versus a third party for infringement, however, you must be able to demonstrate you have earned a top-notch reputation with respect to the mark, and that you were adversely affected by the third party's utilisation of the mark. An infringement claim for a registered trade mark is simpler to prove, and the registration itself may be enough to repress unwanted users. Plus, ownership of a trademark will add value to your business, as this right can be traded by franchise agreement or be included in the sale of the company.

A trade mark may encompass, but not be limited to, a company name, logo, slogan, three-dimensional shape, fragrance and/or colour- provided it stands out from related goods and services. Words that are merely descriptive of the goods/services or that have become customary in your trade, not to mention those that are both deceptive or offensive are deemed unregistrable.

To secure a trade mark registration, an application must be sent to the Trade Marks Registry, accompanied with the mark's details and the goods/services you aim to employ it for. A fee is required to be paid too. Examiners will evaluate the mark's eligibility for registration and cast notices on any previously registered marks that are the same or alike to your mark. An allotted time frame is in place to respond to any objections and comment on third-party marks. The Registry will also advise earlier registration owners of your application's existence. After it is published, the application is exposed to a three-month opposition period. If no opposition is brought up, it will proceed to registration. Lasting protection may be assured provided the mark is genuinely employed for its registered goods/services and renewal fees are remitted every ten years.

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Trade mark registrations are territorial and it is necessary to apply for registration in each country where protection is required. However, it is possible to obtain an International Registration which may extend to a large number countries and a Community Registration can be obtained for the whole of the European Union.

Prior to adopting a new trade mark, it is important to check for the existence of any earlier trade mark rights to assess whether there is a risk of infringement of these earlier rights. Identical and full availability searches can be carried out to check for such earlier conflicting marks. We also recommend keeping a watch on the Trade Marks Register. This ensures that you are made aware of any third parties applying to register an identical or similar mark to yours, providing you with the opportunity to oppose registration of the conflicting mark and thereby maintain the value in your mark.

We can advise in relation to all trade mark matters, including advising on the suitability of your trade mark for registration , searching for earlier rights, applying for registration both at home and abroad, and subscribing to a trade mark watching service.

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