What Type of Legal Advice Should I Get for My Trade Mark Application?

If your business provides goods or services in the UK, it is worth considering whether you need a trade mark. Before submitting a trade mark application, it is beneficial to engage specialist legal advice to ensure your trade mark is as protective as possible. In this article, we will discuss the most essential and other types of advice you can receive to make your application more straightforward.

Deciding What Trade Marks You Can Register

When deciding on the type of trade mark you are applying to register, seeking professional advice from an intellectual property rights lawyer can be highly useful. The Intellectual Property Office (ICO) requires that trade marks meet specific criteria, which you can achieve by: 

• ensuring the format of your mark is capable of registration;
• researching currently registered trade marks to avoid a trade mark dispute; and
• ensuring your mark is not misleading, offensive, non-distinctive, or too descriptive.

You should be creative with your trade mark design, as your mark must be distinctive for your area of industry. Legal advice can ensure that the mark you seek to register is capable of registration with the ICO and meets their relatively long list of requirements.

You can also obtain crucial legal advice regarding which classifications to register your mark. “Classes” refer to an internationally agreed system of categorising goods and services. These may be areas you either work in currently or intend to branch into in the future. Classifying your trade mark is a crucial step in the application process, and you must handle it carefully.

Protecting Your Intellectual Property Rights

Once the ICO grants you a registered trade mark, you will be responsible for enforcing your intellectual property rights. If another business attempts to use your trade mark without consent, you will have legal rights to challenge its usage by alleging trade mark infringement. 

Examples of infringement include using:

• your trade mark on their products;
• your trade mark on their advertising; or
• a trade mark highly similar to yours.

Legal Grounds

You likely have grounds to take action if a business has done any of these or similar acts. Using a solicitor to challenge another business is advisable, as the communication will be more formal and more likely to result in success. Intellectual property lawyers can:

• write to the business asking them to stop using your trade mark and explain your legal rights;
• represent you during mediation proceedings to resolve the dispute;
• commence formal legal action for trade mark infringement and represent you at court hearings. 

While you could do the above without legal representation, you stand to benefit from a solicitor acting on your behalf. Not only does it add greater weight to your arguments as you have a professional at your side, but the process will be done more efficiently. 

Ultimately, when protecting your business, you must maximise the chances of a successful outcome. Therefore, you should consider instructing a legal professional.

Trade Mark Essentials

LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.

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Benefits of Trade Mark Registration

Once you have a registered trade mark, you will be equipped with the benefits of registered trade mark protection. This means you have the right to:

• take legal action against competitors who attempt to use your trade mark without permission;
• use the ® symbol next to your trade mark, which shows competitors you have registered with the Intellectual Property Office and, therefore, possess strong legal rights; and
• sell or license your trade mark and therefore financially gain from the mark’s registration.

It is best to acquire these benefits quickly, so using a legal professional with your application is essential. To efficiently process your application, an intellectual property solicitor will be able to: 

• draft an application quickly; 
• avoid any common mistakes;
• ensure you are registering the best trade mark for your business; and
• ensure that your application is broad enough to cover your present and near-future business plans

If you want to protect your brand and enforce your business’ trade mark rights from the start, seeking advice from a legal professional will speed that process up.

Trade Mark Opposition Proceedings

Another key stage in the application process that you will benefit from obtaining professional legal advice is if your application is opposed. Many trade mark owners will vigorously defend their rights by threatening to oppose trade mark applications that are quite different from theirs. 

While most trade mark applications are not opposed, and many disputes at this stage can be resolved quickly and amicably, you should consider seeking legal advice before altogether abandoning your application or engaging with the other side to ensure you fully understand your legal position.

Key Takeaways

If you are considering registering a trademark for your business in England, consider obtaining legal advice on your application. Trade mark applications require care, and there are a lot of common mistakes that result in failed applications by those with limited experience in the area. Further, a legal professional can assist you during the trade mark registration process in choosing all the correct classifications. 

If you need help or advice around registering a trade mark, our experienced intellectual property lawyers can assist as part of our LegalVision membership. For a low monthly fee, you will have unlimited access to lawyers to answer your questions and draft and review your documents. Call us today on 0808 196 8584 or visit our membership page.

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