Trade Marks

What is a Trade Mark?

Trade Marks are indicators of origin, and can be any sign which differentiates the goods or services of one trader from those of another.

At a basic level they simply allow customers to differentiate goods or services from one another, so they can choose the one they want. However, if you promote your Trade Mark and use it to offer high quality goods or services, then over time it builds a reputation and starts to attract customer loyalty. When that happens Trade Marks evolve into a great deal more than just name tags.  They become enticing indicators of quality, which represent all your efforts to develop great goods or services, and sit at the vanguard of all the marketing you do. With so much hanging on your trade mark it is vital to make it yours and yours alone.

Click on the links above to find out more about how to protect your Trade Mark.

Trade Mark Applications

The best way to protect a mark against being copied by others is to obtain a trade mark registration for it, for which it is necessary to go through a trademark application process.

The Trade Mark must be distinctive for the goods or services in question, and the owners of earlier identical or similar rights must not object. If so, the trademark application process can be relatively short one, but if a dispute arises then it can be a difficult and complex procedure. This is where having a good Trade Mark Attorney is essential, to give yourself the best chance of a favourable outcome.

To be registerable a mark must be capable of being a badge of origin, and it must also be distinctive for the goods or services. Marks which describe a product or a service, or a characteristic thereof, can fail this test. The law in this area is complex and constantly evolving, but as we deal with it on a daily basis we are well equipped to advise on the likelihood or otherwise of a mark becoming registered, and to deal with objections raised by Trade Mark examiners.

The owners of earlier identical or confusably similar marks which are already registered can act to prevent you registering your mark by filing an opposition. Such conflicts are common and can be dealt with in various ways. Having a good Trade Mark Attorney to represent you in an opposition is very important to ensure you get the best result.

At Baron Warren Redfern we handle Trade Mark applications for famous brand owners as well as SMEs and start-ups, both here in the UK, in the EU, and further afield. With our expertise you can be sure of the best result in any trademark application.

Trade Mark Costs

There are various possible costs associated with registering and enforcing your Trade Mark rights, and these largely depend on the nature of any difficulties encountered. However, in most cases, the importance of maintaining your exclusive brand will more than merit the expenditure incurred.

Trade Mark applications are relatively inexpensive if the mark is distinctive for the goods or services, and no third parties object. In such situations, the greatest determining factor for the costs is the geographic coverage required. The cost of a straightforward application to register a mark for one class of goods or services in the UK is affordable for any brand owner. A European Community Trade Mark application to cover the whole of the EU costs more than twice as much, but it is still cost-effective, especially when you consider that it provides protection in all 27 member states. If protection is required in the US, China, Japan, India and so on, then the costs will be greater. However, the cost of filing abroad can be minimised by using the International Registration (Madrid Protocol) system as it cuts out the need for local attorneys at the filing stage.  Our clients are advised of such foreign costs when they consult with us on their choices, and if you would like to know more then please contact us.

If any Trade Mark application encounters difficulties, such as official objections or third-party oppositions, then the costs will rise. However, we always work closely with our clients to ensure they are fully advised of the likely outcome in any situation, so they can make an informed decision on whether it is worth incurring such costs.

The costs associated with enforcing Trade Mark rights against infringers, or opposing new Trade Mark applications for marks which are identical or confusably similar to yours, vary enormously. In some cases, simple communication with the other side achieves the desired result, while in others it is necessary to take more serious legal action. The most important thing is to ensure that the expenditure is cost-effective and worthwhile for you and your business. At Baron Warren Redfern we are fortunate to represent both big brand owners as well as SMEs and start-ups, so our Trade Mark Attorneys are well placed to give you the best strategic advice when it comes to achieving value for money in any particular situation.

If you want to know more about the costs of dealing with any Trade Mark matter you have, please contact us and we will be pleased to help.

Foreign Trade Marks

Trade Mark registrations only protect marks in the territory where they are granted. A UK registration will only protect a mark here, and in order to obtain protection beyond these shores, further applications must be filed in the territories required.

In some cases foreign countries can be grouped together, for example in the EU, where it is possible to obtain a single unitary registration. As European Trade Mark Attorneys we handle such applications on a large scale. In addition, it is also possible to file International Registration (Madrid Protocol) Trade Mark applications at the World Intellectual Property Organisation in Geneva, which designate particular foreign member states. These are always far more cost effective than filing separately in those states. Again, at Baron Warren Redfern we handle such trademark applications regularly for our clients.

With regard to separate foreign national trademark applications, we have associate agents in every country in the world who handle applications for our clients in their territories when required. We have long-standing working relationships with our foreign agents, and our clients benefit from the advantages this brings. We only use agents whose services we have thoroughly tried and tested, and which have proven to be cost-effective and efficient.

If you would like to know more about filing foreign trademark applications please contact us using the link on the left.

Trade Mark Infringement

Trade Mark registrations exist to prevent others using your brand, or anything confusably similar to it. Access to cost-effective and efficient enforcement services is therefore vital if your trade mark registrations are to serve their purpose.

If someone copies your brand, either intentionally or inadvertently, it can confuse your customers, cost you sales and in the worst cases damage your reputation or dilute your brand. It is the kind of problem which needs to be dealt with quickly and decisively, and we have a lot of experience of doing just that. 

In most cases, it does not prove necessary to go to court. If a Trade Mark owner wants to put a stop to an infringer’s activities, in many cases a simple cease and desist letter will achieve the desired result. If not, it may be necessary to begin the initial steps of bringing a Trade Mark infringement action in the Patents County Court or the High Court, which places such pressure on infringers that they often capitulate. The costs of taking such actions are easily within the means of most Trade Mark owners.

Suing for Trade Mark infringement, or threatening to do so, is not the only solution. Instead, revenue can be generated by granting the infringer a Trade Mark licence, or even selling them your brand. Other agreements are also possible, such as amicable co-existence, or a one-off financial settlement. Every situation is different, and it is a question of employing the right strategy to obtain the best result for you.

Sometimes Trade Mark rights are infringed in multiple jurisdictions around the world, and Baron Warren Redfern also has particular experience in coordinating global Trade Mark infringement action through its foreign associates. In particular, we have recent good experience of dealing with brand theft in the Far East. We place great emphasis on ensuring the highest benefit to cost ratio in such circumstances.

At Baron Warren Redfern we have close relationships with various excellent IP litigators whom we use whenever court action proves necessary.

If you would like to know more about enforcing your Trade Mark rights please contact us using the link on the left.