LEGAL MATTERS Trade mark registration
Last month Martine Nathan, Partner at Teacher Stern Solicitors, discussed key points about registering a trade mark. Here, she reveals how not to waste money on new branding without undertaking preliminary checks first, and how to reference trade marks correctly.
Martine Nathan C
learance searches – don’t rebrand without one: Concentration is often focused on the effectiveness of a new brand in a marketing sense only. Thought is rarely given to searching to ensure that the new trade mark does not pose a legal risk to the business. Such a risk may manifest itself in a trade mark infringement claim by a third party where the newly chosen brand is one which is substantively similar to such third party’s rights already registered or in use.
With any rebranding exercise certain due diligence/risk assessment should be undertaken before the new branding is decided upon. Apart from general searches on the Internet it is advisable to conduct some trade mark clearance searching. This aims to identify trade mark risk levels. The results identify problems, ie, prior identical or similar trade mark rights; and spotting these problems at an early stage will enable you to deal
with the potential problem (whether by modifying the new brand or by choosing an entirely new one). While the results may pick up some relevant trade marks, often the risk is small enough to merit proceeding without any modification. But, without any trade mark searching an effective decision based on an informed risk assessment will not be possible. The costs for trade mark clearance searches start at a few hundred pounds (for a simple search, for one trade mark).
Having made an informed decision on the rebrand, knowing your
trade mark rights will enable you to be assertive with them.
Symbols and their meaning The ™ symbol denotes a trade mark which is unregistered and the ® symbol is the assertion of a registered trade mark. You will have noticed them both commonly used in connection with brand names and slogans in advertising or on websites.
Use of the symbols (™ or ®) demonstrates to third parties that you (as the right holder) are aware of the intellectual property in the mark/ slogan. It follows that you are likely
Certain due diligence/ risk assessment should be undertaken before the new branding is decided upon
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to seek to enforce it if necessary. The symbols communicate that the mark/slogan is being used in a trade mark sense and not descriptively (ie, merely as a description of your goods or services). This will link your mark/slogan to your brand and communicate to all that you are investing in it. In the event that you do not register your mark/slogan at the outset, use of the ™ symbol can be helpful if you later want to register it as a trade mark. And these symbols are helpful where your trade mark is not registrable from the outset (for example, if the mark is descriptive).
By using the ™ symbol you are asserting your use of the mark as a trade mark. It may subsequently over time be possible to register the mark even if it is descriptive or not distinctive. Therefore some businesses will use the ™ symbol as part of a concerted plan where they later seek to register it.
To find out more please email
m.nathan@
teacherstern.com
When it has to be right 0844 544 8488
www.informbilling.co.uk www.comms-dealer.com
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