Say hello to Frankie Biggins Part 2
Written by Michael Coyle on 01 October 2017« Return to Reading Room
We all know that fashion changes year after year. My own designs will change every two years and I will have at any one stage some 30-60 new designs on the go all the time. I can protect my design via the Intellectual Property Office in the UK and as a Registered Design. There is a cost to do this and I have been advised that it would cost in the region of £500+VAT to secure a Registered Design. I have some 30-60 designs and they may have a shelf life of one season so I don’t really want to incur these costs. So, I have been advised on Unregistered Design Right. This right confers automatic protection for three years from the date on which the design is first made available to the public within the EU. It’s free and it lasts for three years so this is definitely the one for me……remember Unregistered Design Right or UDR.
“the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation” It will also include handcraft items. The designs must be new (THEY ARE!) and have “individual character” (THEY DO!). I have decided to rely heavily on unregistered designs and copyright.
The UDR law is great for fashion ……it’s free and lasts three years……This law protects the design, namely, "the appearance of the whole or a part of a product resulting from the features of, in particular, the lines, contours, colours, shape, texture and/or materials of the product itself and/or its ornamentation".
As I created the design, I own it. If I went outside of my company and say went to an independent designer, then I would not own it, the designer would. Where the work is commissioned by a third party you will need a copyright assignment. Michael advised that for a fee of £450+VAT he would ensure her designer would sign the designs over to me.
So always remember the rule…..
“You create, you own, you commission you don’t”!
So, if the design is unregistered how can I secure it? Well say hello to ProtectYourDesign.com.
Below, I have done a step by step guide to using the site; uploading work and a note on connecting with other designers through the site.
Further information can be found at http://www.protectyourdesign.com/faq
PROTECT YOUR NAME...GET A TRADE MARK
I was aware that a trade mark was essential to my fashion brand so I spent some time at the UKIPO’s website – (The UKIPO is the website devoted to intellectual property in the UK https://www.gov.uk/government/organisations/intellectual-property-office).
I then browsed to find a professional to help me. So, I decided to opt for either a Solicitor or a member of the Institute of Trade Mark Attorneys. I found that there are so many companies offering these services that I thought it would be safer to go to someone who could at least be bothered to sit an exam!
So now with a general appreciation of what I needed and after finding Michael, I decided to start the trade mark process.
CARRY OUT A SEARCH FIRST
It is not essential but wise to do so. Michael said it was silly to proceed without a search first.
It’s ‘like you are filing blind’. So, do your homework. Some marks are obvious, for example don’t try and register Nika or Nikka for shoes or clothing as you will be stopped by Nike (of course!). Often, it’s not that simple but if you do your homework and apply the law, it may save you several headaches later.
The search facility is here: -
ONCE YOU ARE AWARE OF THE RISKS – FILE THE MARK= PART ONE
There are three types of trade marks you can file. In simple terms, they are as follows: -
Word only. Standard words i.e. no stylised font, i.e. FRANKIE BIGGINS.
Stylised word. i.e. NIKE WITH A SWOOSH OR FRANKIE BIGGINS IN A LOGO OR STYLISED FORM i.e. FB.
Logo only. No words. That is the Swoosh in respect of Nike. Doesn’t apply to me…yet!
ONCE YOU ARE AWARE OF THE RISKS – FILE THE MARK= PART TWO
Now that you decided on the trade mark you will be filing, you need to consider the classes. The classes are split into goods (1-34) and services (35-45). In terms of fashion, below are the most common with class 25 being the most important i.e. clothing!
Most common classes used in fashion: -
- (25) Clothing and headgear
- (14) Jewellery
- (18) Handbags
- (42) Fashion Design and Consultancy
- (35) Retail services
- (41) Fashion shows
If you do not know which class(es) your goods or services are in, you may wish to use the classification search tool TMclass. This will help you to search for, and classify your goods and/or services needed to apply for trade mark protection.
ONCE YOU ARE AWARE OF THE RISKS – FILE THE MARK= PART THREE
I had a grant of £1,000.00 so as money was tight I decided to file the trade mark in the UK (for now!) and I decided on three classes.
Class 14 for Jewellery.
Class 25 for clothing and hats.
Class 18 for handbags.
So I needed to pay the following (as of February 2017): -
- £270.00 (UK Government fee NO VAT).
- £400.00+VAT (Legal fee). Legal fees fluctuate from £100.00-5,000.00+VAT. Having shopped around and having spoken to a lower, middle and top range Solicitor, I decided that £400.00+VAT was a fair fee.
The mark was filed. Within 2 months, it was examined and then it was advertised for two months before the mark proceeded to registration.
The advertisement stage is important. Here is Michael once more…. “As soon as the mark is examined and passes the examination test, the next stage is for the mark to be advertised. In the UK, it’s two months. This allows third parties the opportunity to oppose your mark on the grounds that there may be a likelihood of confusion. I think one in twenty are opposed that come across my desk so it is not the norm although it does happen”.
So, it is always a good idea to ensure that you try and devise a distinctive logo, as it stands a better chance of getting through the opposition period. But my two-month period went very quickly with no oppositions. I had registered my brands so could now label all my range: -
I received more funding from an investor and so I decided to file my mark in the EU. Brexit has made life more of a concern from a commercial and legal perspective, but for now I thought it sensible to file in all the EU including of course, the UK. I can use my UK trade marks as a starting point providing I don’t want to change them in any way. An application to register one EU trade mark in one class of goods costs €850.00. To mirror the classes my UK trade mark is registered for, an additional €200.00 for the other two classes will be required. Michael charged me £550.00+VAT. Therefore, I paid £550.00+VAT and the €1,050.00 fees to the EU Intellectual Property Office, and registered FRANKIE BIGGINS® and FB® throughout the EU. Yipppeee!!
I then decided to file throughout the world, which will provide extensive protection for my two brands and this can be done using a system known as the Madrid Protocol.
It allows me to protect my trade marks in any other country I wish. By making an application through the Madrid Protocol, it is possible to apply to multiple international intellectual property organisations with one more application. I need to base my application on my previous UK trade mark registrations. The cost of this process depends on how many countries applications I decided to file. So, I decided to file using my EU trade mark as a launch pad in the following countries: -
USA, China, Japan, Singapore, and New Zealand. Using my EU trade mark, the fees were as follows: -
£3,500.00+VAT including filing and legal fees. There may be further legal fees as the trade mark are examined through the various countries. Nevertheless, a good guide for each country would be £1,000.00+VAT.
To get a better idea of what the fees are going to be, I used the fee calculator on the World Intellectual Property Office’s website: -
So, I have protected my brand; you need 6 months and approximately £1,000.00 or so to get the process underway……please don’t forget – your trade mark, your brand is everything… get it done!
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