information and advice - trademarks

All companies have at least one potential trade mark, yes even yours, and that is the name under which you trade. It is perhaps the most important asset that your business owns because your reputation is intrinsically linked to it yet how many of you have taken steps to protect it or would know how to go about doing so? Trade marks like copyright are part of intellectual property law. Registering a trade mark is not the same as registering your business as a limited company as the protection afforded by each is entirely separate and distinct.

Don't be fooled into thinking that just because you have registered your company name with Companies House that the name is automatically yours because it may not be; especially if someone else has previously & possibly even subsequently registered the same name for similar goods or services as a trade mark. The same applies to domain names, just because you have registered your company name as a domain name, it does not mean that it is automatically yours.

Why bother?

Why should you bother? Well the UK is now regarded as a first to register as opposed to a first to use country. This means that the first person to register a mark now has the exclusive right to it even if someone else has been using the identical mark for a number of years. That person can of course object to the registration but this will be considerably more costly and time consuming than if they had applied to register the mark themselves. There can of course be no guarantee that the opposition will be successful and if the opponent loses they may be liable for the costs of the other party which can run to thousands of pounds.

How much does it cost?

So how much does it cost to register a trade mark ? All goods and services are divided into a total of 45 classes, the more classes you register in the more expensive it gets. For example it usually costs somewhere in the region of £300 – 400 to file a single mark in a single class, with each additional class costing a further £100. The cost of prosecuting the application through to registration can be as little as £200 meaning that the owner can have exclusive rights to the mark for as little as £500.

How long will it take?

It usually takes on average approximately 9 months for an application to proceed to registration, provided of course no third parties object. This may sound like a long time but the Government are in effect giving you a monopoly in perpetuity in relation to the mark in question. Once you have your registration you can licence others to use it for a fee, or at some point in the future sell it either separately from or with your business.

What should I do next?

If you wish to seek further advice it is best to speak to a Registered Trade Mark Attorney who will be able to help you. The author can be contacted at AJM Associates on 0208-650-6694 / 07966-195453 or andi@ajm-associates.co.uk and is willing to give anyone quoting this publication up to an hours free advice.

© AJM Associates 2003