Trade Mark Services

We can represent you and your clients directly before the UKIPO, the courts in the UK and also before WIPO and the Community Trade Mark Office (OHIM).  

Further afield, we work closely with agents in other jurisdictions to provide an end to end service in those jurisdictions.  While two attorneys may be involved at some stages, we endeavour to ensure that we add value to the process rather than being a mere cost.

For direct clients we are happy to become much more involved and have expertise in developing IP training programmes, policing use of marks and also developing and maintaining an IP protection policy/strategy.

Our advice is honest - we aren't afraid to tell a client or would be client that in our opinion they would be best served spending their money elsewhere such as on looking for a new brand. 

Trade mark searches

Before commiting yourself to using a particular trade mark (for example by spending money on advertising, marketing or printing), a trade mark availability search is recommended. It would be very unwise to start using a trade mark which is already owned by someone else, since to do so might lead to the proprietor taking legal action to prevent your using the mark. You may also be forced to pay damages and to destroy stock, packaging or printed material bearing the trade mark.

Procedure for registration

If you would like us to file an application for you, we will need details of the mark, the applicant, and a list of the goods and/or services in respect of which the mark is intended to be used and territory of interest. We will then decide which trade mark classes need to be covered and we will prepare a specification of goods and services for the application.

For UK trade marks, the trade mark application is submitted to the Trade Marks Registry together with the official fees. The Registry issues an individual number for each application, and then examines the mark to check on its suitability for registration. Examination includes a search through existing trade marks on the Registry's records, and an analysis of whether or not the mark is sufficiently distinctive. An examination report is issued detailing any objections to the application. We report the results of the examination to you, together with our suggestions as to how the objections may be addressed. We then respond to the examination report on your instructions.

Once any objections have been overcome, the application is advertised in the Trade Marks Journal, and there is an opportunity for third parties to oppose the application. Provided no opposition is filed, the Certificate of Registration is issued. The whole process is likely to take on average 8 to 12 months. If an opposition is filed, the opposition procedure may take 2 to 3 years.

The registration remains in force for 10 years and may be renewed in perpetuity for further terms of 10 years.

Please note that the mere filing of an application does not guarantee registration, and fees are not refunded. An application may be filed at any time, whether or not the applicant has used the mark, but it is normally recommended that an application be filed sooner rather than later, since mere use of a trade mark does not make the rights in it so secure. similarly, the registration of a company or domain does not guarantee that you are free to use the company name or domain in respect of commercial activities (which could be covered by a trade mark registration).

We can advise on trade mark procedures and applications abroad link as well as in the U.K.

Trade Marks are becoming increasingly litigious.  There is also growing popularity in certain territories to make bad-faith registrations and then attempt to sell rights to the genuine company.  We offer the skills needed to deal with these issues and are able to hold our own against even the biggest firms of lawyers in litigation.