Summary
- Instructing an IP lawyer for a UK trade mark application helps businesses avoid common mistakes such as inadequate searches, incorrect classification, and designing marks that are too descriptive or generic, all of which can result in a failed or inadequately protected application.
- During the application process, lawyers can respond to IPO objections, including lack of distinctiveness and conflicts with earlier marks, by providing evidence of acquired distinctiveness, making legal arguments about the mark’s character, or negotiating coexistence agreements with earlier mark owners.
- Selecting the correct trade mark classes is critical, as protection only extends to registered classes; missing a relevant class can allow competitors to register similar marks in that space, leaving your business without protection in those areas.
- This article is a plain-English guide to the benefits of using an IP lawyer for trade mark registration for UK businesses, prepared by LegalVision, a commercial law firm.
- LegalVision specialises in advising clients on intellectual property and trade mark matters.
Tips for Businesses
Commission a comprehensive trade mark search before filing to identify conflicts early. Identify all classes relevant to your current and planned business activities before submitting your application – it is significantly harder and more expensive to add classes later. If you receive an IPO objection or third-party opposition, seek legal advice promptly as strict deadlines apply. Once registered, monitor the market for infringement and act quickly if unauthorised use is identified.
On this page
- Designing your Trade Mark with the Benefit of Legal Advice
- Avoiding Common Mistakes
- During the Application Process
- Common IPO Objections and How Lawyers Overcome Them
- Conflict With Earlier Marks
- Trade Mark Infringement Proceedings
- Understanding Trade Mark Classes
- Key Takeaways
- Frequently Asked Questions
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.
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 could fail.
It is crucial to be aware of other marks that could conflict with yours. The lowest risk approach is to 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 trade marks 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-effective and time-effective.
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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
- arguing the trade mark is generic and not distinctive.
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 that 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.
Common IPO Objections and How Lawyers Overcome Them
Understanding frequent IPO objections demonstrates why legal expertise is valuable during the application process.
Lack of Distinctive Character/descriptive Marks
The IPO often objects that marks are too simple or ordinary to distinguish your business. Lawyers overcome this by providing evidence of acquired distinctiveness through use, such as sales figures, marketing spend, or consumer surveys showing public recognition.
Marks that merely describe your goods or services (like “SUPER SOFT” for towels) face refusal. Lawyers can argue the mark is suggestive rather than descriptive, demonstrate acquired distinctiveness, or show the term has multiple meanings beyond the descriptive one.
Conflict With Earlier Marks
If your mark is similar to an existing registration, the third party will have two months to oppose your application before registration. Lawyers address this by arguing sufficient differences in appearance, sound, or meaning, demonstrating different goods or services, or negotiating coexistence agreements with earlier mark owners.
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. Trade mark 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 trade mark, the first action will often be to send them a letter asking them to cease usage. A trade mark 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.
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.
LegalVision’s Trade Mark Essentials Guide provides valuable information for any business looking to register or enforce a trade mark.
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 with the application process for registering your trade mark, LegalVision provides ongoing legal support for all businesses through our fixed-fee legal membership. Our experienced intellectual property lawyers help businesses manage contracts, employment law, disputes, intellectual property, and more, with unlimited access to specialist lawyers for a fixed monthly fee. To learn more about LegalVision’s legal membership, call 0808 196 8584 or visit our membership page.
Frequently Asked Questions
What is the purpose of intellectual property protection?
Intellectual property protects elements of your business, including logos, designs and other important intangible assets that add value to your brand. In addition, IP protection equips your business with protection against other businesses that could attempt to use your mark, for example, and benefit from your reputation.
What questions should I ask a trade mark lawyer?
You can ask a trade mark lawyer any question you wish. However, it is usually helpful to set up an appointment to discuss your current IP strategy and ask as many questions as possible to learn more about the process and how IP protection can benefit your brand.
Why is choosing the right trade mark classes important?
Your trade mark is only protected in the classes in which it is registered. Omitting a relevant class can allow competitors to register similar marks in those classes, leaving your business without protection in certain areas.
What should I do if another business uses my registered trade mark without permission?
The first step is usually to send a cease and desist letter requesting they stop using your mark. If that fails, a trade mark lawyer can correspond with the other party and represent you in formal infringement proceedings if necessary.
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