Reasons to Use an IP Lawyer for Your Trade Mark Registration Application

In the UK, intellectual property lawyers assist businesses regularly during trade mark registration applications to the Intellectual Property Office (IPO). Suppose you have a business and are considering applying for a registered trade mark. In that case, it is advisable to seek professional legal advice to ensure you have covered all bases for your application and avoid a worthless application. This article will discuss why you should work with a lawyer when applying for a trade mark in the UK.

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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Designing your Trade Mark with the Benefit of Legal Advice

Trade marks must have a distinctive character. Therefore, your consumers cannot confuse your mark with another business in your industry. Indeed, originality is encouraged for your mark to be as unique as possible. If your mark is too similar to another mark already registered, the application will fail. Therefore it is crucial to be aware of other marks. You must avoid any similar trade mark in your goods or services industry. An intellectual property lawyer can assist in conducting a thorough search of currently registered trademarks and those currently in the process of their application.

Avoiding Common Mistakes 

Lawyers experienced in trade mark applications know how to avoid common mistakes when making trade mark applications. Some of these mistakes include:

• failing to conduct a comprehensive trade mark search;
• not choosing all applicable trade mark classifications;
• designing a mark that is misleading or offensive;
• designing a mark that is not capable of growth or fails to reflect your business properly; and
• failing to maintain your mark through on-time renewals or consistent usage.

You can avoid these pitfalls by instructing a competent solicitor. However, if you are a business owner seeking to expand your business, outsourcing your intellectual property management will be both cost and time effective.

During the Application Process

Once you submit your application to the IPO, you can receive objections and third-party oppositions to your proposed trade mark. Opposition is a legal procedure where another party opposes based on absolute grounds or relative grounds. Absolute grounds include:

• arguing the trade mark is too descriptive; or
• stating the trade mark is generic and not distinct.

Third-party observations are non-legal, and the IPO does not have to consider them in their decision. However, both formal oppositions and third-party observations will usually require some form of legal advice from a professional to know how to respond, particularly oppositions which amount to formal legal action. In this situation, you may require a trade mark lawyer to represent you and your trade mark throughout the process. Intellectual property lawyers can assist throughout the trade mark disputes that can arise and assist your brand in maintaining its original proposed trade mark.

Trade Mark Infringement Proceedings

Once you obtain a registered trade mark, you may still encounter challenges in protecting your trade mark rights. While registered trade marks equip you with exclusive rights over your mark, there may still be instances where other businesses use or copy your trade mark. Trademark infringement is where another party uses your trade mark without your consent, even innocently.

Your exclusive rights are best protected when an experienced lawyer can defend your legal rights. If another business uses your registered trademark, the first action will often be to send them a letter asking them to cease usage. A trademark lawyer usually takes this process more seriously than a layperson. If you later need to take formal legal action for trade mark infringement, a solicitor will be essential in: 

• providing advice; 
• corresponding with the other party; and 
• representing you in court.

Understanding Trade Mark Classes

The application process for registration and achieving trade mark protection in the UK is relatively straightforward. However, some parts of the process require scrutiny and care. Specifically, choosing the right trade mark classes is essential when applying. The identification of trade mark classes you wish to include in the application. 

It is vital for your business and overall brand to register your trade mark in all applicable classes that reflect the goods or services you offer. This is because your trade mark will only be protected in those classes. If you accidentally leave a relevant class out of your application, competitors may be able to register similarly in these classes. You would then not have any protection under certain circumstances. 

An intellectual property lawyer will assist you in identifying all classes your business is currently involved in. This will ensure you obtain the necessary protection at minimal expense.  

Key Takeaways

Businesses in the UK often instruct intellectual property lawyers to assist with their applications for trade mark registration. The registration process can be complex, particularly if you wish to register multiple marks in many trade mark classes. An experienced solicitor can:

• ensure your mark has a distinctive character;
• help you avoid common mistakes;
• assist you during the application process; 
• assist with infringement proceedings; and
• help you understand trade mark classes.

If you need help around the application process for registering your 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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