GUEST BLOG: Five ways to avoid trademark hell

DAVE, the station, launched back in 2007. The brand immediately appealed to the bloke next-door audience and was a success from the off. However, in a massive oversight, Dave's holding company UKTV failed to get legal rights to the name: it didn't own the trade mark. So Dave might now have to become Pete, Trev or Rob, if another company called Dave gets its way.

This case highlights the importance of safeguarding intellectual property. Anyone thinking of using a brand or business name should conduct searches, not only for identical or similar registered marks, but also for identical or similar unregistered trade marks and/or company names that are being used for similar goods or services.

Doing this work at the outset can save a considerable amount of time and money. You avoid having to defend oppositions and the cost of a re-brand for the business.

So, make sure you are not stuck with a bill for thousands of pounds with our five easy steps:

  • The crux of the matter

Know the law. Registering your company name with Companies House does not give you any trade mark protection, nor does owning the website address.

  • Make sure your company name is trademarked

Christian Clothing Company were shocked to receive a call from another clothing company to inform them that they were infringing their trade mark by operating under a name that shared the first two words of their name. The company were forced to re-brand. Frazer Evett, its founder, said: "There was little else I could do, the other business owned the trade mark and my registration with Companies House and owning the URL offered no protection. I had heard about trade marking a logo, but never just words". Re-branding cost the company about £28,000.

  • Research the Classes

Just because another company has the same name as you, and they've registered it as a trade mark, does not automatically mean you can't. Two companies can own the same trade mark as long as they are registered for different products. To make sense of what products are similar the trade mark registries operate a system of classes, meaning that two companies can own the same trade mark as long as they are registered for different products. Make sure you are properly registered in all the different classes in which you wish to operate.

  • Get the right protection for the future

Think through your application and whether your business may wish to diversify into other trading areas, such as expanding from clothing into make-up. A registered trade mark lasts for ten years before renewal fees are due, and once it's registered you cannot add new categories of products or services without a full new application.

  • Go international NOW

When applying for a trade mark, it's also a good idea to think about the long-term plans for your business e.g. do you plan to expand oversees? If so a Community Trade Mark covers all 27 EU countries, including of course the UK. A UK registered trade mark gives no protection in the rest of the EU, the US or beyond, so it is imperative that businesses with international aspirations register their trade marks internationally if they want to ensure their brands are adequately protected in these markets.

Find out more about Trade Mark Direct

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