Trade Marks Part 2
Written by Michael Coyle on 24 April 2015« Return to Reading Room
In my view securing a trade mark is the most important step a company must do before launching a product or service. I am amazed at how often people come to me and say we think someone is using a similar product or service but have no form of protection. Likewise when we come to buy and or sell a business its crazy that the seller/buyer has no assets secured.
The fees are entirely manageable:-
Government filing fee £170.00 for one class of goods or services and £50.00 per extra class.
Good firms will charge in the region of £300-500+VAT for the application.
EU ( ie the 28 member states inc UK)
Filing fee of 900 Euros
Good firms will charge in the region of £350-650+VAT for the application.
So these are not off the scale and frankly if you cannot afford these fees you shouldn’t really be going in to business.
When you file a trade mark its always a good idea to carry out a search first. Some trade marks will fail miserably but you need to remember that competition to file a distinctive trade mark is high and therefore there are very many trade marks which are similar. Its always a good idea to carry out or do your own due diligence searches. Could save you a fortune.
In the UK you are protected from the date of the application ( EU from the date its published) although either cannot be enforced until the trade mark is placed on the register.
A trade mark is renewable every ten years.
So what do I get?
Well you get the statutory right to the exclusive use of the mark in connection with the goods or services for which it is registered. A valid registration gives you the right to sue for trade mark infringement any person who uses an identical or similar mark in connection with identical or similar goods without authorisation, where the use has caused or is likely to cause confusion
If the mark has a reputation, there is also a right to prevent others from using the same or similar marks for dissimilar goods or services, where that use leads to an unfair advantage or causes detriment to the registered mark. Examples of the kind of "use" that can constitute infringement are listed in section 10 and Article 9, and include, for example, putting the offending sign on goods or packaging, importing goods under the sign, and using the sign in advertising.
The registered proprietor can authorise or license others to use the mark (section 28, TMA and Article 22, CTM Regulation).
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