Clearance Searching

We cannot overstate the need for all of our clients to ensure the availability of new marks.

Thousands of trade marks are already owned by other organisations and before using any new mark you should ensure that there will be no infringement of the rights of others. The consequences of using a mark that is the same or similar to someone else's mark could be commercially disastrous – you could be stopped from using the mark and you could be liable to pay damages to whoever owns the existing rights.

Also, if you have a mark that is already in use but which is now to be used in a new country or for a new range of goods or services, you need to ensure that your expanded use will not lead to conflict with the rights of others.

It is therefore very important to ensure that any new mark, or any extended use of an existing mark, does not conflict with prior rights of others.

We can make enquiries in order to ascertain availability of the marks that you want to use.

There are different types of search. A preliminary search for any new mark involves checking in the country of immediate commercial interest in respect of the product/service category for which the mark is intended to be used. Where “knock-out” prior rights are found, we need search no further.

In other circumstances, a more in-depth intermediate search may be appropriate – to cover potentially similar marks and potentially related product/service fields and to extend to other countries of potential interest. We can arrange for more extensive searching to be conducted and then provide advice as to the relevance of such prior registrations and pending applications as might be identified.

On occasion, it might be further necessary and appropriate to make a full search to ascertain whether a new mark that is free from conflict with existing registered rights might run into objection on the basis of rights of third parties acquired at common law through use. Again, we can obtain suitable reports on your behalf and advise you as to whether objection might be likely to arise or sustainable should it arise.

We will consult with you as to the most appropriate search strategy to be adopted for the new marks that you want to use.

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Registration

The registration of trade marks is the cornerstone of our business.

Registration of trade marks is important – it provides a means of enforcing your rights against unauthorised use of your brands (or similar marks) by others, and also a defence against problems that might arise if you do not register and someone else might then acquire “better” rights by way of their own registration. Having regard to the importance of registration, you can be certain that we take our responsibility in ensuring that your brand/s are protected in the best way possible very seriously indeed.

We can register your trade marks at the UK and European Community Registries; by way of the International Register, we can register trade marks on your behalf in all countries that are party to the “Madrid Protocol”; and, through a network of overseas attorneys with whom we have worked for many years, we can attend to registrations in all countries of the world where registration is possible.

It is important to ensure that your trade marks are registered in the most appropriate manner as to provide for the best possible rights, that such registrations are in respect of the most suitable classes of goods and/or services and, having regard to the options as to where registration can now be secured (eg. national Registries, CTM or by way of the International Register), that the most cost-efficient type of registration is chosen -   and our job is to ensure that you receive the best possible advice in this regard.

Filing applications, attending to all formalities relating thereto, prosecuting those applications and dealing with any official or third party objections that might arise is second nature to the Partners of our firm. We know what we are doing, we do it without fuss or bother and our aim is to do all of this without ever burdening you unnecessarily. Where applications encounter difficulties we will advise you without “legalise” and we will give clear and concise advice as to how to ensure that your marks are registered.

Click here to enquire about trade mark registration.

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Renewals

Trade mark registrations can be maintained on an indefinite basis so long as the mark remains in use and so long as renewal fees are paid, usually at 10 year intervals.

We provide a Renewals Service and will send timely reminders in advance of renewal deadlines. For registrations that are to be maintained, we can attend to renewal on your behalf.

More than this, we will advise you as to whether renewal is necessarily the best option. Trade mark law is ever-changing and this can provide options that are better than renewal. For example, national registration might be replaced by an International Registration that will be a more cost-effective way of protecting your brands.

Similarly, your business is continually developing and it is possible that existing registrations might need replacing in order to take account of your trading activities as of today.

Unlike many other firms, we do not just take your money and run! Our concern is to ensure that your marks are best protected in the most cost-effective manner and we will therefore review your portfolio before taking the ‘easy option' of simply renewing your registrations.

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Watching Service

It is important to ensure that others do not start to use or try to register your trade marks.

Many Trade Marks Offices (including the UK Trade Marks Office and the Community Trade Marks Office) do not object to applications even if they conflict with existing registered marks or prior pending applications; Companies House will register company names that are very similar to existing names and without regard to trade mark rights; and domain names can be registered even though they might be liable to conflict with prior rights of others – and this means that the onus is on brand owners to ensure the protection of their own marks. A Watching Service is therefore important to your business. To view our Briefing Note regarding the recent change in the way in which the UK Trade Marks Office examines applications and the importance of a Watching Service, please click here.

We can set up a suitable Watching Service for you. This will mean that you will be notified when anyone else files a trade mark application or registers a company name or a domain name that is the same or similar to your trade mark. We can then advise you as to the action that you should take in order to ensure that your mark is not registered by others.

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Enforcement (Litigation and Oppositions)

It is important that you stop others from using trade marks, domain names, company names or other indicia that are the same or similar to your marks as this could confuse your customers (or potential customers) and therefore damage your business.

Unauthorised use by others might be designed to take advantage of the reputation that you have acquired, or it might be in the nature of an unintended infringement of your rights – but no matter whether the infringement might be in the nature of counterfeiting or simple coincidence, if your customers are confused your business will suffer. We can help you to prevent unauthorised use of your brands. We can advise as to whether you have a basis upon which to pursue an objection and the likelihood of success if you do so, we can prepare “cease and desist” letters with a view to settling disputes without need to initiate formal proceedings and, when it becomes necessary to ask the Courts to protect your rights, we can manage the process of litigation for you.

You should also ensure that others do not register trade marks that are the same or similar to your own. Preventing others from registering conflicting marks can deter them from using those marks and thus ensure the maintenance of the distinctiveness of you brands.

Where third parties seek to register marks with which you are concerned, we can prepare, file, and then prosecute oppositions on your behalf.

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Assignments and Licensing

Your trade marks are valuable assets which can be sold or licensed for others to use.

We can prepare assignment and license documents as needed, and we can record those documents at the relevant Registries in order to ensure the safe maintenance of your trade mark rights.

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Registration - Designs

We can register your designs at the UK and European Community Offices and through a network of overseas attorneys we can arrange for registration to be obtained in any country where the registration of designs is possible.

There can be claim to rights in respect of a design without registering that design but such rights are difficult to prove and even more difficult to enforce. If, therefore, your products have a design that is important to you it is advisable to obtain registered rights. Registration provides you with a competitive advantage by enabling you to prevent others from using designs that are the same or similar to the design that you have protected.

Click here to enquire about design registration.

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Maintenance - Designs

Design registrations can be maintained for a finite period so long as renewal fees are paid at the appropriate time. We will provide you with advance notice of deadlines and for registrations that are to be maintained we can attend to payment of official fees for you.

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Enforcement - Designs

In the event that your design rights might be infringed, we can advise you whether an objection by you might be sustainable and where appropriate we can manage the enforcement of your rights for you.

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Domain Name Management

The apparent ease of making a domain name registration online can mean that it is carried out on an ad hoc basis – for example when a new project is launched or even when one is just being considered. Often, no policy is in place so that a consistent approach is taken to ensure domains are registered to the correct legal entity and that generic contact details are used. In some cases, domain names are registered in the name of third parties such as design agencies, rather than the company which actually owns and operates the website, or even to employees as individuals.

With high staff turnover, email addresses and contact names change frequently resulting in problems gaining access to the domain name for renewal or technical purposes and a lack of central records regarding ownership of domains may mean that these potentially valuable assets can inadvertently be lost.

We provide a single point of contact for your company’s domain name needs. If required, we can undertake a worldwide audit to establish which domain names are owned by your business. By consolidating your domain names with a single registrar and maintaining up to date contact details, we ensure you will never miss out on any official correspondence relating to your domain names. Schedules of renewals due are provided quarterly to allow a decision to be taken well in advance as to whether to maintain the registrations.

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