We provide free pre-filing advice on any issue relating to trademarks and trademark registration. We advise on issues such as:
Choosing a suitable, acceptable and registrable trademark
In order to be registrable a trademark must be distinctive. In other words it must be capable of distinguishing your goods or services from those of your competitors. You cannot register a trademark which is descriptive, generic or non-distinctive. We know what can and cannot be registered and advise on all issues concerning the inherent registrability of a trademark.
The classification of trademarks
The classification of trademarks can be complicated and confusing. Trademarks are classified into 45 different classes. There are 34 goods classes and 11 service classes. Ensuring that your trademark is protected in the correct classes is imperative. If you register a trademark in the incorrect class then your trademark registration may not give you any protection at all. In most instances you are only likely to find this out during a dispute with a third party in which case it is usually too late.
Prior to commencing use of a trademark it is important to conduct a trademark search. This will allow you to ascertain firstly whether the trademark is available for registration and secondly whether or not your use of the trademark infringes a third party’s registered or unregistered trademark rights. RevoMark specialises in conducting, analysing and reporting trademark searches. We make use of highly sophisticated software to search the trademark databases and have significant expertise and experience in this area.
Trademark searching is best left to the professionals. Analysing search results can be extremely difficult and requires specialist knowledge of trademark law and practice. Accurate search results require human analysis. Distinguishable goods or services often fall into the same class and automated search results are not capable of dealing with this.
UK & EU Trademark Registration:
We provide all services relating to trademark registration. We will ensure that you get the best possible trademark protection by drafting accurate, comprehensive and acceptable specifications. We prepare and file the trademark application for you and deal directly with the trademark registry on any issues regarding the trademark application. The trademark application process takes approximately 5 months and we keep you updated on developments as they take place. This includes reporting and advising on the examination report, reporting acceptance and publication and finally sending you the trademark registration certificate.
International Trademark Registration:
We register trademarks in any country in the world. From the Canada and Iceland in the north to South Africa and New Zealand in the south or any country in between.
There are various different methods and systems that can be used to secure international trademark registration. We will work out the best strategy for you.
Our knowledgeable and experienced trademark lawyers or agents are well versed in all contentious matters. Trademark opposition and trademark invalidation actions are a particular forte of ours. Having won or settled 96% of the matters we have been involved in our track record speaks for itself. We pride ourselves in giving honest and accurate advice. Your best interests are at the heart of everything we do.
Is a third party infringing your trademark or have you received a cease and desist letter regarding trademark infringement? Contact us for a free initial discussion to enable you to make an informed decision on the options available to you.
If you have an unregistered trademark you will have to rely on your common law rights (and not statutory rights as is the case with a registered trademark) to prevent a third party from using an identical or confusingly similar mark. This remedy is known as an action for passing off. In order to succeed in a passing off action you need to prove the following:
- You have goodwill and a reputation
- Your opponent has made a misrepresentation in the course of trade
- You have suffered consequential damage
The above requirements are notoriously difficult and can be extremely expensive to prove. Consequently passing off actions are generally far more costly to litigate than trade mark infringement actions. Furthermore, and more importantly, if you do not have a reputation (as is the case with many small to medium sized companies) you cannot succeed in an action for passing off. In other words no reputation means no protection.
Licensing & Franchising:
Licensing or franchising are two of the most commonly used methods of exploiting trademark or intellectual property rights thereby allowing a business to develop and grow. We are highly experienced and knowledgeable in this area and are able to advise on or draft any of the relevant agreements.
Trademark assignments (transfer of ownership):
As with any other property it is possible to transfer ownership of a trademark from one company, entity or person to another. If ownership is not transferred you will not be able to enforce your trademark rights. The trademark registration can also become vulnerable to expungement from the register of the basis of non-use. We will draft the required trademark assignment agreement and attend to recording the transfer against the trademark application or registration.
Most trademark registries do not automatically refuse applications on the basis of earlier conflicting marks. The onus is therefore on you to protect your trademark rights. Our trademark watching service allows us to monitor all relevant databases. We will inform you of any potentially conflicting trademark applications that have been filed thereby giving you the opportunity to oppose the relevant application timeously.
Trademark Portfolio Management:
Businesses with more than 10 registered trademarks or pending trademark applications will benefit from our cost effective management service handling renewals, watching services, oppositions and new applications.
Designs protect the shape and configuration of a product. If you company produces a product with a unique shape or design then securing design registration is very important. We can file design applications on your behalf at both the UK and European Union registries.
Many people confuse trademarks with copyright or think that they are one in the same. Copyright can be valuable, but it cannot protect names or slogans. Moreover, it only protects against deliberate copying and not coincidental similarity. Proving ownership of copyright also tends to be more difficult and expensive than relying on trade mark registration.