Gillian Deas, President of the Institute of Trade Mark Attorneys explains why even the smallest business must have a trade mark strategy.
When I was asked to contribute to this edition of Innovation UK, the first thing I did was to look at the website and I was particularly struck by the quote from the Chief Executive of UK Trade & Invest, Andrew Cahn, in which he says:
?Innovation drives economic progress. For businesses it will mean sustained or improved growth. For consumers, it will mean higher-quality and better-value goods, more efficient services and higher standards of living. To the economy as a whole, innovation is the key to higher productivity.?
As a reader of this publication, you are probably involved in research and development and naturally keen on innovation. These are, after all, key elements of entrepreneurial success in the 21st century. Taking the finished products into the marketplace and giving them an identity that differentiates your goods, or indeed services, from others is where my organisation comes in and where our paths cross. Sadly, it is my experience that many innovators focus so much on R&D that transferring it into the commercial world is often neglected. My purpose in this article is to try and bridge that gap and at least inform you about a crucial part of that process and to introduce you to the world of trade marks.
The most common misconception is that trade marks (logos and brands) are only for big businesses ? that is, those companies with lots of money ? and that they have no relevance to start-up companies and young businesses. This is dangerous thinking. Trade marks and their importance is something that all business people should think about. Even if you do not proceed to the stage of registration, before you enter the marketplace you need to give some thought to trade marks. Why? Because failure to do so could cost you thousands of pounds at start-up, which is the very point at which you do not want to be throwing away money.
Let?s start with some basic facts. The prime purpose of a trade mark is to distinguish the goods or services of one business from the goods or services of others in the marketplace. To do this, the trade mark needs to be different from any other mark used in respect of the same or similar goods or services. It can take a variety of forms including a word (for example Virgin), a slogan (Just Do It), a logo (Esso?s tiger), a jingle (Air on a G String to advertise Hamlet cigars), a colour (the purple colour of Cadbury?s chocolate packs), a shape (Dimple Whisky bottles), letters (BP, MTV), a number (No 5 for perfume), or a personal name (Walkers).
In considering which trade mark you wish to adopt, you need to conduct searches to determine what marks are already on the trade-marks, register and whether or not your proposed mark is safe to adopt and use within the marketplace without fear of infringing existing marks. Failure to carry out these searches could result in your having to rethink your entire marketing strategy, redesigning all your promotional literature and packaging materials and starting again from scratch ? not the most auspicious way to start a new venture, and certainly not a cost-effective way to begin. It could even lead to having to pay damages to the owner of the earlier trade mark you may have unwittingly infringed.
It is possible to conduct identical searches yourself by examining the UK Register and the Community Register online via the websites www.ipo.gov.uk and www.oami.eu.int. However, online searches are limited. They do not search for phonetically similar marks, nor do they search for what may be deemed confusingly similar marks. They do not guarantee that the mark is free to use or whether it can be registered. That is a skilled undertaking and is really best undertaken by professionals.
This is where the Institute of Trade Mark Attorneys (ITMA) comes in. ITMA members are taught and examined on all the necessary skills and maintain their professional knowledge through a thorough programme of continuing professional development. Your trade mark attorney will also process your application. This involves completing forms from the Trade Marks Registry, part of the IPO (the Intellectual Property Office, formerly known as the Patent Office), which give details of the applicant together with a representation of the mark and defining the class or classes for which the trade-mark is to be registered.
There are various classes in the UK and it may be necessary to file for more than one class depending on the goods or services in question. The number of classes will determine the fees to be paid to the Registry, currently £200 for the first class and £50 for each additional class. In addition there are, of course, the fees to be paid to your trade mark attorney. Trade mark attorney charges vary, which is why you will need to talk to individual firms for more detail.
The Registry then examines the application to ensure that it meets the requirements of the Trade Marks Act. Once the Registry is satisfied that the application can proceed, the Registry publishes the application in a weekly Trade Marks Journal so that interested parties may learn of the application and may, if they so wish, lodge an opposition. They have two months in which to do this.
If no oppositions are received, the Registry will enter the mark on the Trade Marks Register and will issue you with a certificate. If there are oppositions, your trade mark attorney will endeavour to resolve them and will represent you at Hearings conducted by officials of the Registry. Assuming all goes well and you receive your registration certificate, your mark will remain validly on the Register, provided it is in use and the renewal fees have been paid. The mark remains on the Register indefinitely subject to these requirements. The renewal fees are due for payment every 10 years.
Even the smallest business must have a trade mark strategy. It is important to remember that a trade-mark is essentially a tool for use in the marketplace and a sensible trade-mark strategy is usually inextricably linked to the marketing plans of the business.
The nature of the business itself will determine the extent to which trade-mark protection is necessary. Most businesses would be wise to protect the names and brands of their principal product lines or services but others may need to do much more. Your trade mark attorney will be only too happy to advise you.
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Added the 31 August 2009 in category Innovation UK Vol5-1