Is your business name protected?
In this excellent Q&A with Drive member Rachael Ward of Ward Trade Marks Ltd., lots of Drive members got information they didn’t know they needed!
This is a compilation of the live Ask the Expert hour in the Drive Facebook Group
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Rachael is a chartered trade mark attorney with extensive experience in trade mark law. She’s worked as principal contact for Whitbread, Costa, Technicolor, Carlton Television, ONdigital, Fred Perry, Kangol and Mars. She’s a Member of the Institute of Trade Mark Attorneys (ITMA), a Professional Representative before the European Union Intellectual Property Office (EU IPO), and a Member of the European Communities Trade Mark Association (ECTA). She has contributed to the UK Trade Mark Handbook, has published several articles on the subject and is currently a committee member of the International Trademark Association.
Ward Trade Marks Ltd is one of the only specialist trade mark companies in the UK.
Protecting your brand
Emma James What are things someone should think about when considering whether a trademark is necessary? Are there certain industries/services/products where it’s more relevant than others?
Rachael Ward Tms are relevant in every industry. What to think about: if you opened your post one morning, and there was a cease and desist letter there telling you can no longer use your name, how would you feel? If you’d shrug your shoulders and tell yourself that it’s no big deal, and choose another name for your business, then don’t bother to register. If on the other hand you’d be mortified as you have an emotional connection to your brand, you know how you came up with it, it makes you smile, you love your brand, then register it.
The important thing to remember is that it is a “first to file” system in the UK. So (in general and simplistically), the person who files the tm first gets the rights, not the one who has used it.
Sarah Kemp My business is called Black Biro Recruitment, and I took the risk that the word “biro” is now a generalised term rather than a trade marked term (Bic Biro). Do you have any advice about whether I’m at any risk at all?
Rachael Ward I’d like to have a further think about that one. Depends on how effectively they enforce their rights and whether they instead say that it’s a famous mark and could therefore prevent you using in respect of recruitment. I’d need to have a look at the register and see what’s on there.
Karl Gjertsen How do I change the address for trademarks I have (1 UK and 1 US trademark)?
Rachael Ward Change of address against a tm can be done quite simply and is usually part of the service that your tm attorney provides either for free or at a small charge. So if you have a tm attorney, ask them to do the update. Otherwise, if you want to do it yourself in UK, file a TM21A at the gov.uk website. There are no fees. The IPO will update the address and confirm to you. But I’d ask your US associates to sort it for you. We can do UK, EU, US. Wherever you can think of, we can file there (that sounds like I am bursting into song – I am not). I have even filed in Guam (though admit I had to look that one up).
Karl Gjertsen How do I protect myself from people registering similar trademarks?
Rachael Ward I’d recommend a tm watching service. Have a service set up for an annual charge, it tells you about the same or similar marks in your area and you can object or oppose as necessary
Karl Gjertsen Do you offer a TM watching service?
Rachael Ward Well I’m glad you asked that – yes we do! We call it WardWatch. I will send you some info on it.
How much does it cost?
Karl Gjertsen How much does Ward Trademarks charge for a new trademark and can you apply for UK, EU and US trademarks?
Rachael Ward Charges in the UK start from £750 including the IPO official fees of £170, fixed fees from start to finish, for one mark in one class. But we have a consultation with you to determine what is best to go for, and explain everything.
Andrew Hawkins Trademarking can clearly be a useful aid in protecting a business idea/brand – but isn’t the process still very complex and expensive?
Rachael Ward It’s not always expensive. When you think you can get an absolute monopoly for £750 in the UK which stops ANYONE using the same mark as you for ever, it’s not such bad value. But I agree it can get expensive if you run into troubles or get oppositions. Sometimes for no good reason. When we registered WARD in the EU, we got an objection from a cardboard box manufacturer *rolls eyes*
Karl Gjertsen It seems harder and harder to form a company where you can get a matching domain name! Now I’ve finally found a good combination, how can I tell if the name can be trademarked?
Rachael Ward I hear you! A tm search of the UK and EU Registers (or wherever you wish to use the mark) can be conducted to look for any conflicting marks. That gives you an opinion on the likelihood of any conflict. And of course a tm can be used to prevent registration of a conflicting domain name (in certain circumstances)
Tim Headley Is it a repeatable fee or once for all time?
Rachael Ward The mark has to be renewed every ten years, which costs about £400 depending on the number of classes.
TMs, IP, Copyright and Patents
Siobhan Costello What’s the difference between a trademark and a copyright?
Rachael Ward A tm can be words, names, logos, and even music, sounds, smells and actions! A registered tm gives you an absolute monopoly where you register it. It’s the strongest right you can get. Copyright is different, and it arises automatically in artistic and literary works. So if you paint a picture or write a book, you have copyright in it. You don’t need to register it in the UK, it just exists. That said, it’s not as strong in the sense that to enforce it you have to prove that someone else has copied you. The innocent infringer is untouchable.
Siobhan Costello And a patent – is that on a product?
Rachael Ward Patents cover products and processes.
Lucy Churchill I’m a sculptor currently working on a specific design that I’d like to reproduce in large quantities for sale. It’s a simple concept that could be copied and marketed by other people. I worry about this as I discuss production methods with various parties. Can I safeguard the idea as my Intellectual Property? What would you suggest?
Rachael Ward Sounds like that is a registered design/copyright issue, and also an NDA agreement required. I’m more specifically trade marks, looking after brands and logos. I can help with protecting your name, but otherwise an IP solicitor would be your best bet in advising on exploiting industrial copyright. That said, if it will be easily copied, and unless you have a big budget for enforcement, you may want to brand the sculptures with your name, and register your name in this class. Make it all about the fact it is a “Lucy Churchill” sculpture and that is a guarantee of high quality workmanship. If you can get consumers to look for your name as that guarantee, that’s what tm ownership is about.
Siobhan Costello I have a 7 Step programme I use in my business. Is there a particular criteria that tells me whether I should trademark my programme?
Rachael Ward There are particular criteria which we (I mean tm attorneys) are used to applying and making a judgement on, to see if it will be acceptable to the IPO. I can chat with you about this but in general, tms must be distinctive and cannot describe the product. The best ones are invented like KODAK.
How long does it take?
Karl Gjertsen How long do trademarks take to go through? My UK tm went through quickly, but it was over a year in the US.
Rachael Ward Depends on the country but UK can be 3-4 months if no problems; EU 4-6 months, US is a good result in a year. In Brazil it takes about 4 years to get to examination; in China there was a hold up as they ran out of the special paper needed to print registration certificates on 🙂
Siobhan Costello To do a TM search do you just put in TM search into Google or is there a particular website link I can use?
Rachael Ward You can do a search for tms covering the UK on the gov.uk website. That’s a free service but the trouble is it doesn’t always give completely reliable results. It’s good for a first scan, but not as conclusive clearance, which you need to get from a tm attorney. Or, sometimes the costs of searching are quite high, and if launch is some way away, you can simply file an application. The IPO will do a search as part of examination, and you can take a view whether to go for it or not at that point.
Emma James Presumably a trademark is only relevant to the class it’s in, so can be used by someone else in a different class? (Guess who’s just searched for their name and found something similar in a different class?)
Rachael Ward Yes, it’s all about the classes. The register is divided into 45 different classes of goods and services so it may be okay, if it’s registered for different goods or services – all about whether there is a “likelihood of confusion” between consumers. Also the mark may not be in use by the other party, so they may not object if you were to try and get on the register.
Emma James I don’t think there’s likely to be confusion, but it’s definitely going on the list of things I need to think about. Didn’t occur to me when setting up to check trademarks. I may well be rebranding to the Accounting Acrobat!
Tim Headley I’m slightly confused. There used to be a legal requirement to register business names which eventually was ceased, other than for Ltd co’s. You’re talking about a register for TMs but mentioning business names. Has the bus name register been revived?
Rachael Ward There’s the company name register, where you can register any name unless it’s exactly like one that someone else has registered. So you could register Tim Headley Limited and someone could come along and register Tim Headley UK Limited. Companies House would allow that unless you object. However, you can also register your name as a tm, for example we have registered WARD for trade mark attorney and legal services. You could register Tim Headley as a tm in your area of business, and prevent others from using the same or similar mark.
Martin Smallridge How much protection does a UK registered TM cover you if you are (and have been) trading internationally under that mark… if someone tries to register the tm elsewhere?
Rachael Ward Tms are territorial, so a UK registered mark will cover you in the UK only. Though you can oppose someone else’s registration on the basis of your use in a particular territory, but it’s more tricky to prove and expensive. Does that help? Let me know or send me an email via the website if you need more info.
Martin Smallridge How will Brexit will affect European block registration option?
Rachael Ward Good question! Still being decided I’m afraid. Meantime we’re saying cover UK and EU at same time, by filing applications in both territories, as we don’t know what will happen post Brexit.
If you have other questions for Rachael you can leave them in the comments below or get in touch at: