Like other aspects of Intellectual Property, such as technical inventions, industrial designs and copyright, trade marks can be a valuable business asset and investing in their proper protection and clearance for use ought to be an important consideration for any business.
What is a Trade Mark and why are they important?
Any business that sells products or services has a name, maybe also a logo or other artwork defining its “brand”, and perhaps even one or more specific product names unique to the business. All of these elements may constitute Trade Marks – they distinguish your products or services from your competitors’ and, very importantly, enable your present and future customers to identify your products or services as having a particular source, characteristics and quality.
Protecting your exclusivity to a Trade Mark, ie. ensuring you alone have the rights to its use, so you can prevent others from “stealing” or misusing it or creating something close to or confusable with it, should therefore be an important consideration for any developing business, just as much as any other legal investment. Furthermore, establishing at an early stage that you are actually legally free to adopt a particular name or logo as a Trade Mark is a wise “insurance”, especially if you consider the potential cost of being on the wrong end of a legal action for infringement of someone else’s Trade Mark or being forced to re-brand yourself, your products or services.
Also remember that just because you may be having original design work done for you by Fox Graphics, this does not mean you will automatically have freedom to use and protect for yourself any Trade Mark embodied in the work. Indeed, Fox Graphics gives no warrant, nor takes any responsibility for ensuring, that any Trade Mark element of design work they produce is legally free for trade mark use or open to registration for yourself, regardless of whether such a Trade Mark is provided by you or created by Fox Graphics.
Furthermore, simply having a limited company name registered as such at Companies House does not give you any automatic right to use an element of that name as a Trade Mark, which is governed wholly by Trade Mark Law.
How can I establish whether I am free to use my Trade Mark(s)?
Before you adopt a new Trade Mark, it is advisable to have a formal search done to check that it (or something close to it) is not already owned by someone else. If it is, then legally you may not be free to use your Trade Mark in your particular business. Such a search typically costs in the range of £150-900 (not including VAT, UK only and per Mark searched), depending on the level of searching required and volume of results produced, and typically takes 1½ to 3 weeks.
It is unwise simply to rely on the fact that you may believe you know your market and your competitors and have not seen your proposed Trade Mark out there up to now, since you cannot expect to know about all relevant registered Trade Mark rights that may exist but which perhaps may not be in use or, being used in your precise commercial field.#
Of course, however, it may be that your attitude to risk leads you to conclude that such a search is not worth the cost, but this should always be balanced against a view as to the potential risk and cost to your business of having to defend a legal action for infringement and/or having to undergo a rebranding exercise.
A Trade Mark search cannot completely remove all risks associated with adopting a new Trade Mark, but often it is worth factoring in the cost of consolidating the legal Trade Mark position along with the often more significant cost of an overall design/branding exercise, of which a Trade Mark is just a part.
How do I protect my exclusivity to my Trade Mark(s)?
The simplest, quickest and cheapest way is to register it. A Trade Mark registration gives you exclusive and wide-reaching legal rights to stop unauthorised or misleading use by others of your Trade Mark or something similar to it. The protection, as is also the deterrent effect of a registration, is also immediate. The process of registering a Trade Mark typically takes 3 to 5 months, with a typical total cost in the range of £400-700 (not including VAT, and assuming there is no opposition to it being registered). A formal Trade Mark search as above will normally also establish if there are any obstacles to your being able to register the Trade Mark for yourself.
If you opt not to register your Trade Mark, you may still get some degree of protection for it by simply using it in the course of your business. However, since in this case any protection comes from the reputation you build up in the Mark, it can often take at least a few years to establish any such “common law” rights. Stopping an infringer on this basis is therefore usually much more difficult, time-consuming and expensive, so relying on an unregistered Trade Mark for protection is often a false economy. In these circumstances, the use of the “TM” symbol adjacent the Trade Mark is a wise precaution, as it also is when you have an application to register your Mark and it’s still pending. Only once a Mark is actually registered can you (and you should) use instead the “®“ symbol with it.
How can Fox Graphics help in all of this?
We can put you in touch with a qualified Trade Mark Agent/Attorney who can:
- advise on the selection of new Trade Marks;
- conduct any searching that may be necessary to determine the availability and freedom for use of a new Trade Mark;
- act on your behalf in applying for and obtaining a Registration of your Trade Mark(s);
- advise you on protection for your Trade Mark(s) abroad, if this is relevant to your business, and organise corresponding registration(s) of your Trade Mark(s) in other countries;
- advise and act on your behalf on infringement issues, eg. where enforcement of your Trade Mark rights is needed or if you are accused of infringing the rights of others;
- advise on trade mark transfers and licensing issues
Please contact Fox Graphics if you would like help with any of the above, so we can put you in touch with the appropriate legal professional.