Tag Archives: Trade Mark Registration

IPO Warn About Misleading Trademark Renewal Notices

We register trademarks for a lot of our customers. As a result we end up getting a lot of invoices for trademark renewals, community trademark filing and entries into public registers. They look official and are sent by official sounding companies but unfortunately a lot of these are not legitimate invoices.

The companies that send them out use the publically available trademark information to compile mailing lists and then automatically ‘invoice’ everyone who has registered a trademark. Recently they have even sent invoices for trademark fees to the Intellectual Property Office (IPO), who are the body responsible for collecting these fees (see the example below). The IPO have posted some of these invoices on a new warnings section of their site. They refer to them as misleading invoices and point out that they asked for payments of £1500 for a trademark renewal which should have cost £350.

The IPO point out that the only organisations which offer legal trademark and patent services in the UK other than themselves are the European Patent Office (EPO), The Office for Harmonization in the Internal Market (OHIM) and The World Intellectual Property Organization (WIPO). If you receive an invoice asking for payment from anyone other than these organisations then the IPO advice is not to pay it. They suggest instead that you consult a trademark attorney, solicitor, trading standards or give them a call direct.

Trademark are the best way to protect your business name. Before launching into a trademark application we recommend conducting a trademark search to see what words or phrases are already taken. If you would like more information about how trademarks can be used to protect your business please get in touch.

Non-IPO Trademark Invoice

A 'Misleading' Invoice sent to the IPO requesting payment to for a trademark renewal

Filing a Trademark

filing a trademarkIf you are running a limited company or any other sort of business, then you will want to protect your interests. The last thing you want is someone stealing your ideas or making a profit off your good name. To get the best possible protection for your business it’s a good idea to file a trademark. Filing a trademark involves registering your mark with the IPO (Intellectual Property Office) also known as the Patent Office. However, most people soon find that filing a trademark is not as simple as it might first appear.

Trademark law is a complex thing. Governed by the Trade Marks Act 1994, broken down into over 100 sections; the law covers everything from filing a trademark, requirements of registration, reasons for rejection and enforcement after filing to name a few.

What is a Trademark?

The first place to start is establishing what a trademark is.

Section 1(1) states:

In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

So, as you can see, a trademark can potentially consist of anything from a company name to a logo, slogan, brand or product name. Filing a trademark will lead to protection for one or more of these things as it is entered on the register and protected from use by anyone else.

Filing a Trademark – The Requirements

There are a number of rules that need to be satisfied before a trademark can be filed. The reasons for trademark rejection are specified by Section 3 of the act and these combined with the guidance laid down by the IPO make it clear that to carry out a trademark filing, the mark must be:

  • Sufficiently Distinctive – In the sense that it stands out from other trademarks on the register and in the market place.

While it must not be:

  • Illegal, offensive or deceptive in nature,
  • Descriptive of your product/service or trade,
  • Something which is customary in your line of trade,
  • Listed as a protected symbol (see Section 4 of the act – things like Royal crests or National flags).

If these requirements are satisfied then the IPO are likely to accept a trademark registration as long as there is not already a mark on the register which it deems to be the same or too similar to the proposed trademark.

The IPO have provided a short list of what will not be deemed as sufficiently distinctive:

File a Trade mark

Common registration misconceptions listed by the Intellectual Property Office

Filing a Trademark – The Classes

Because of the variety of businesses and the kinds of trademark likely to be registered, trademarks are broken down into various “trademark classes“. This means that when filing a trademark, you need to be sure to file your mark under the correct class. Classes are made up of either “goods” or “services” and in 45 sections. It is possible to register a trademark in one class or section when there is already a similar or identical trademark registered under another class. This is due to the fact that because of the nature of business the two trademarks (and their companies) will never interfere with each other. There are real life examples that you can see in our other article on the benefits of registering a trademark.

Carrying Out a Trademark Search

Before attempting to file a trademark, it is important to perform a trademark search. This involves examining the register to ensure that your chosen trademark is not already present. Carrying out a trademark registration without first carrying out a search could mean you end up losing your trademark filing fee when the registration is rejected by the IPO. TheCompanyWarehouse.co.uk offer a trademark search service as an optional extra when placing a company formation order with us (or as a separate service if necessary). Our service involves a carrying out a thorough check of the register and supplying you with a comprehensive report. We charge a small fee, but the cost is far less than you would pay if you attempted to carry out a registration without first ensuring the register was clear of similar or identical trademarks.

Filing a Trademark Using The Company Warehouse contact-us

Due to the complex nature of the law, the various classes and the regulations surrounding trademark registration, it is highly recommended that you use a professional to help you file a trademark. TheCompanyWarehouse.co.uk has a dedicated trademark team who have the experience and knowledge necessary to give you a high quality service at a low cost. Thousands of companies and businesses over the years have used us to perform filing on their behalf. Our trademark registration service involves specific guidance on how best to protect your trademark, which classes to file it under based on your type of business and the activities you cover and more. We will then carry out the registration on your behalf, drafting the necessary paperwork and submitting the application to the IPO. We monitor your trademark through the whole process and once it is registered we send you the trademark certificate, as proof of complete registration.

Once the necessary paperwork has arrived with the IPO (and has been date stamped), Section 33 of the act says this is when the trademark filing is complete. Theoretically the trademark is then protected as long as it is not rejected by the IPO during the registration process. Filed trademarks deemed as acceptable by the IPO are placed on the trademarks journal which is published each week in order to allow potential objections to be submitted. Objections to registration can be submitted up to 2 months after publication. Once a trademark makes it through this period and is accepted on to the register it is then properly protected.

What Filing a Trademark Means To You

Filing a trademark has a number of benefits as you will have seen in our previous article. The first is that you can use the ® symbol, to denote a registered trademark (or RTM). You will then be able to take legal action against anyone attempting to use your trademark in their own business and thus protect your interests. Trademarks also have a value in the fact that they become a commodity that you can sell on. Filing a trademark does not however provide permanent protection. Trademarks need to be re-registered every 10 years in order to ensure lasting protection on the register.

Warnings From The IPO

The IPO have issued the following warning. Please be wary of these companies and be sure to use a professional trademark team like TheCompanyWarehouse.co.uk to complete your trademark filing.

IPO Trademark warnings

Contact us today for further guidance or to carry out a trademark registration/search.

Filing a trademark

“Trading As” – Company and Business Names

It is quite a common occurrence in the UK for Limited Companies to adopt a “trading” name to run their business with. Having already carried out a company formation and registered a company with one name they find that they would rather run the business under another name. In some instances, a limited company may well run multiple businesses, with various different “trading” names, yet all under the umbrella of the same company. There are, or can be, a number of issues to consider when contemplating such a thing.

First of all, The Business Names Act 1985 imposes certain legal requirements on companies adopting this business technique. The most obvious point is the trading name cannot be the same as or similar to another company or business name in a way that might be confusing. In the same way that you cannot register a company name with the same name as a company that is already registered, you cannot register one company name (which is completely different) then use a trading name which is the same as a already registered (and trading) company name.

Secondly, the use of sensitive words is prohibited/regulated in use as part of a trading name in much the same way as it is for limited company names. So using words like “association”, “group”, “federation” and similar words is prohibited. Clearly, a company cannot use the word “limited” as part of its trading name as this implies registration of a limited company under that name.

Thirdly, if using a trading name as part of carrying out business, a company is required to display the appropriate information in all places where the business is carried out and on all documentation, invoices and alike. So for example, if ABC Limited is trading as XYZ, then they must make as much clear on a notice at their premises, on paperwork and website displaying – “ABC Limited trading as XYZ“.

The Pitfalls of “Trading As”.

The use of a trading name might seem appealing to most businesses as it is easier than registering a company under the new name. However, there are several pitfalls. The whole area of “trading as” is rather a mine field.

It’s clearly important to carry out a company name search to ensure that the trading as name is not already registered as a limited company. Sensible business people would also carry out other searches in local business directories, on the internet and in the phone book to make sure they are not going to step on anyone’s toes. Because a trading name is not registered as a limited company, it is not properly protected. There is always the danger that at a later date someone else may register the trading name as a limited company and then stake their claim. This could clearly cause complications for your business as they will have the right to the name and therefore can force you to stop using it. So it is advisable to carry out a company formation and register the trading name as a limited company, then keep that company dormant. This might seem to defeat the point in using a trading name, but because a dormant (non-trading) company is just that, the registration is low cost and maintenance is straightforward.

The other obvious danger is that someone else has the trading name registered as a trade mark. This could lead to costly legal battles and a headache for the company. It is advisable to carry out a trade mark search and a trade mark registration with regards to the business trading name, both in order to protect it from use from others and to ensure it has not already been registered.

This article is not meant to be comprehensive legal advice, the law is subject to change and is complex in nature with regard to trading names. Please consult a legal professional for full advice.

Google and Toyota – Brand Success and Failure

Google DocsThere is talk in the news today of the success of Google’s brand; knocking Coca-Cola off the number 2 spot on the world’s most powerful brands list and nipping at the heels of American superstore giant Walmart. In the meantime, with recent events surrounding Japanese car giant Toyotas mass vehicle recall it is easy to see the importance of both building and maintaining a brand.

Although still on the power brand list, Toyota is predicted to take a massive hit from this incident and due to their failure to act quickly; their brand is bound to suffer. New companies can take some wisdom away from the errors of others by paying attention to moments like this. If you intend to start a company and work on your brand then you need to ensure you maintain the quality. Establish the principals of your company and its brand early on and maintain them. Deal with brand threatening incidents swiftly to maintain credibility. Customers and the public in general pin a great deal of importance to brand names and what they represent, a moment like this can make or break a company. Everyone knows that people are quick to remember the bad and forget the good, mud sticks as the saying goes. So make sure you start out as you mean to go on.

Forming a new company, it is important to create a logo and brand for your business from day one. Putting our professional graphics designers to use, means that you can have a quality logo and corporate identity set up for you from day one for a low cost. Remember, it’s important to ensure that you carry out a trade mark registration on your brand name, slogan and logo to ensure that they are protected from the start. This is one step you can take to ensure that other people cannot damage your brand. Then you simply have to work on building your brands reputation and maintaining its superiority in the marketplace.

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