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It seems simple enough. You can register a trade mark yourself, receive a certificate, and that’s it, your trade mark is protected for 10 years.
Except there are things that could happen once you’ve registered that trade mark that you might not have anticipated, and you might not be aware of the best ways to deal with them.
At Downing IP we’d always recommend using our services to file a trade mark application, but it is even more important now because of changes in the way the Intellectual Property Office (IPO) works and the impact that has on SMEs in particular. Many people aren’t aware that the Intellectual Property Office (IPO) doesn’t turn down applications that are similar to existing registered trade marks. Applicants simply receive a list of existing trade marks and the classes they are registered in, and have to decide whether to proceed with their application.
Holders of existing trade marks receive one letter from the IPO notifying them that there has been an application with a similar name, and have to decide whether to respond with an objection.
For example… We recently gained a new client who came to us because they had put in an application that had has been opposed.
The owner of a similar trade mark, who had applied without the assistance of an IP lawyer, is opposing their application. Fortunately our client realised that they needed professional help to deal with this query, and asked us to help.
On examining the objection and the details of the existing trade mark, we worked out that the opposition’s trade mark hadn’t been registered for quite the right services and that they don’t have a very strong case, meaning they are unlikely to succeed if the case goes to a hearing.
In this instance, our client benefits from our expertise in being able to defend this opposition. If the trade mark holder had engaged an IP lawyer to file their trade mark and/or to defend it, they would have been in a much stronger position when making the objection.
So what happens when we register a new trade mark for you?
We research and write the application to ensure that a trade mark is registered in the correct classes and is distinctive and robust.
In the event of any opposition to the application, we consider all the relevant angles and our correspondence is carefully written to ensure that these are covered.
In addition, the holder of a trade mark may receive letters about new trade marks being registered that are similar to theirs. If your trade mark is registered by us at Downing IP, we receive the correspondence from the IPO on your behalf, assess the new application and get in touch with you to discuss any action that needs to be taken.
This means that challenges and queries won’t be missed and can be tackled early, which can often reduce the costs and timeline involved (especially if this prompt action prevents a case from going to a hearing).
Welcoming a new member of the Downing IP team
We welcome Kaashif to our team! Kaashif is a trainee patent attorney with a strong academic and technical background in physics. He holds a Master’s degree in Physics and Astrophysics from the University of Leicester and earned his PhD in High Current Physics from Loughborough University.
Kaashif is passionate about helping inventors secure robust protection for their ideas. He draws on his technical expertise and industry experience to craft effective patent applications and responses that support the best possible outcomes for his clients.
Do you have any trade mark questions?
Contact us if you’re thinking about registering a trade mark, have encountered a problem with a trade mark you own, or have been notified about an application that you wish to object to.
Until next time.
Michael
