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

If your business provides goods or services in England, it is worth considering whether you will 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 what types of advice are the most essential and other types of advice you can receive to make your application more straightforward.

Deciding What You Can Trade Mark

When deciding on the type of trade mark you are applying to register, it can be highly useful to seek professional advice from an intellectual property rights lawyer. The Intellectual Property Office 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 worthless application; and
• ensuring your mark is not misleading, offensive, non-distinctive, or too descriptive in character.

You should be creative with your trade mark design, as your mark must be distinctive for your area of industry. Legal advice can assist you by ensuring that the design you are seeking to register is capable of registration with the Intellectual Property Office and meets their relatively long list of requirements.

You can also obtain crucial legal advice regarding which classifications to register your mark within. You can think of classifications are areas of industry in which your trade mark will apply. 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 with care.

Protecting Your Intellectual Property Rights

Once the Intellectual Property Office grants you a registered trade mark, it will be your responsibility to protect your intellectual property rights. If another business attempts to use your trade mark without consent, you will have legal rights to challenge their usage, also known as intellectual property 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 for commercial gain.

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 IP rights infringement and represent you at court hearings. 

While you could do the above without legal representation, you stand to benefit with a solicitor instructing 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 you are protecting your business, you need to maximise the chances of a successful result. Therefore instructing a legal professional is strongly advised.

Benefits of Trade Mark Registration

Once you have a registered trade mark, you will be equipped with 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 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, which is why 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; and
• ensure you are registering the best trade mark for your business. 

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.

Key Takeaways

If you are considering applying for a trade mark to be registered for your business in England, it is highly worthwhile to 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 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.

Frequently Asked Questions