To speak to a solicitor about the trademarking process, get in touch with the intellectual property team today. Call 0333 323 5292 or fill in the enquiry form on this page and let us know a suitable time for us to contact you.

What is a Trade Mark?

Trade marks come in two basic forms, registered and unregistered. They essentially protect brands and the recognisable aspects of brands; the things that identify the commercial source of goods or services.

Trade marks are also unique among intellectual property rights in that they are potentially immortal – although they have to be renewed at 10-year intervals, they can be renewed indefinitely. All the other intellectual property rights run out someday, but trade marks can go on forever. One consequence of this, however, is that they need to be very carefully managed and maintained, as if they are allowed to lose their distinctiveness by being used wrongly, or because other people in the market have been allowed to erode their distinctiveness by infringement, then trade marks can be removed from the register. Portfolio management is therefore of crucial importance and forms an important element of our team’s day-to-day work for its clients.

The Team

The world is full of brands and the law in this area can be complex and subtle. Our team can draw on immense experience to advise throughout the process, from “clearing” proposed marks at the brand development stage to ensure they could be registered and would not infringe the rights of others, to maintaining brand portfolios and assisting with exploitation and enforcement, including taking and defending proceedings. Clive Lawrence is the author of a full-length textbook for practitioners on all aspects of law relating to brands – please see below.

Unregistered Trade Marks

Unregistered trade marks come into being as a side-effect of successful trading activity. Where a business has generated goodwill – that is, business reputation, customer recognition and recognisability –  it is often said that it has an “unregistered trade mark”. What this really boils down to is this – that business which owns that goodwill has, as a result, the ability to sue for “passing off”.

Passing off happens if a trade has goodwill and another trader creates some deception or confusion in the market as a result of which that goodwill is damaged. Examples of this would be counterfeit products, use of a similar name or logo, or use of similar packaging, resulting in products or services being bought by mistake by members of the public who confuse them with the products of the owner of the goodwill. We have helped clients enforce these rights or defend accusation based on passing off many times.

There are similar rights in other countries but called by different names such as unfair competition rights. We have advised and enforced these rights too on many occasions, most recently in Greece and Germany.

While passing off can offer a powerful remedy, it is better and more reliable to register trade marks to clarify your rights and the range of protection that is available to you.

Registered Trade Marks

Registered trade marks, like patents, arise from a registration process in one of the registries that exist in every functioning economy worldwide. One difference from patents is that you can apply for a trade mark at any time – there are no time limits, which means that use in the market prevents registration. There is also no need to show that inventive steps were involved in creating the mark.

For a trade mark to be registered, it needs to show that:

  • it is capable of being represented graphically (and so is a brand name, a visual sign, a shape or something else that can be written down including a sound or a smell);
  • it is distinctive (and doesn’t, for instance, simply describe the products or their intended effect), and
  • it isn’t the same as or capable of being confused with another mark that is registered for the same or similar goods or services, or another mark that is well known and might be prejudiced by its use.

If it passes those tests, your mark can then be registered for any appropriate goods and services, which are divided into 45 classes and need to be identified with great care.

The mark, when registered, gives protection against use by other businesses of:

  • a mark identical to the mark you have registered with goods or service, which are identical to those for which your mark is registered;
  • a mark identical to the mark you have registered with goods or service which are similar to those for which your mark is registered, where that would be likely to cause confusion with your mark;
  • a mark similar to the mark you have registered with goods or service, which are identical or similar to those for which your mark is registered, where that would be likely to cause confusion with your mark;
  • where your mark is well-known, a mark identical or similar to your mark, where that use takes unfair advantage of your mark.

It also provides a valuable piece of property that can be exploited in a multitude of ways, including licensing, merchandising and franchising.

Web Address (URL) and Company Name Disputes

Neither the organisation who register URLs (e.g. Nominet) nor those who register companies (e.g. Companies House in the UK) have the right to confer intellectual property rights. URLs and company names are, however, often of major importance in a brand context, and when they are the subject of a dispute, there are issues of intellectual property to consider as well as those that relate to the specific rules of the registry concerned.

In the context of disputes over the registration and ownership of URLs, including disputes that arise when URLs are used to impersonate others or confuse potential customers, there is a considerable amount of intellectual property law that is relevant. The dispute resolution mechanisms set down by the World Intellectual Property Organisation, and adopted to a greater or lesser extent by the principal URL registration bodies, take clear account of the status of intellectual property rights in determining the dispute.

As part of its intellectual property practice the team has accumulated detailed knowledge and experience of disputes of this nature and can help navigate you through the process.

Relevant publications by team members

Valuation and Exploitation of Intellectual Property and Intangible Assets, by John Sykes, co-author. (Emis).

Brands: Law, Practice and Precedents, by Clive Lawrence (Jordans Publishing)

Sports Business: Law Practice and Precedents, by Clive Lawrence, co-author (Jordans Publishing)

Sport: Law and Practice, Clive Lawrence, contributor, 3rd Edition (Tottel)

Getting in Touch

If you have a brand that needs protecting, or believe your brand has been infringed, contact John Sykes or Clive Lawrence using the details below to discuss your requirements. With offices in Leeds, Sheffield and York, we are able to provide assistance to many individuals and businesses across Yorkshire and the rest of the UK.

Why Choose Lupton Fawcett?

Having advised and supported many local families, individuals and businesses, we are proud to offer clients a dedicated service from specialist solicitors who are experts in their field:

We're Award Winning

We were awarded the Legal 500 HR/Employment Law team of the year in 2017

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We're connected to the people, businesses and infrastructure throughout Yorkshire

We Put You First

You can be sure to expect superb client service from us. Our clients are our priority

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Recognised by leading Legal Directories Chambers & Partners and the Legal 500

Frequently Asked Questions

Can I use the trade mark notice ™ on my marketing and advertising materials and packaging even if I have not registered my brands?

Yes.  The trade mark notice ™ indicates that your brand, whether it is a word, series of words, symbol or logo is being used by you as a trade mark and you should use the trade mark notice to maximise your protection.

If I apply for a Community Trade Mark and there is a problem in one country which means that I cannot or do not want to proceed in that country can I still get a registration for the rest of the EU?

No. A Community Trade Mark application is for all or nothing. If you have a problem in one or more member state of the EU you will lose the application and will need to start again by applying in each member state in which you want protection.

If I have sold my branded goods in the EU can I stop them from being resold by one of my customers via particular distribution channels such as discount shops or on eBay?

It depends! Generally it is not possible to prevent how your products are dealt with once they are sold in the EU. If you can show that you have a valid reason for managing your distribution channels and have in place an active distribution channels policy then it may be possible. This is a complicated area of the law and it may be worth you having a conversation with one of our lawyers to explore your options.

If I have already sold my product can I still apply for registered design protection?

Yes you have 12 months from the first sale or marketing of a new product to get registered design protection.

If I have no registered design protection and a competitor is copying my designs can I stop them?

You may be able to stop them if your design is less than 10 years old and is not a commonplace design. This is a complicated area of law and requires careful consideration. John Sykes has just updated his reference book for lawyers on Design Law and John, or one of the team would be happy to advise you.

Be careful because making a threat to a competitor may be grounds for the competitor to bring proceedings against you for “groundless threats”. A threat would include making a complaint to eBay or Amazon to take your competitor’s products off sale.

I have shown my invention to my friends in the pub and they think I should get patent protection for it. Can I get a patent?

Not unless:

  • your friends were bound by terms of confidentiality because you cannot get patent protection for an invention which has been disclosed AND
  • your invention is new AND
  • your invention is capable of industrial application

If you want to show your ideas to third parties whether friends or potential customers or manufacturers you MUST HAVE A CONFIDENTIALITY AGREEMENT in place.  If the answers to the above questions are all “yes” then speak to us about getting patent protection.

I told my friend to keep my idea for an invention secret. I think he is working on building a business to exploit it. Can I stop him?

Only if you have a patent application in place which successfully proceeds to grant or he has copied an original material work you created or own. So, for example, if you built a prototype or created drawings of your invention and your friend has copied these.

You could issue proceedings for breach of confidence but this is a difficult claim to bring if there is only your word against his and he may not be “good for the money” and/or you do not want to spend the monies required on legal action to get an injunction and any other legal remedies to which you may be entitled.

Get In Touch Today!

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