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Intellectual Property Registration and Strategy
For any business, your brand gives your existing and potential customers the assurance that they are buying something of quality, from the same business each time. As a result, any business does have default, but relatively weak, unregistered brand rights.
That said, enforcing these can be difficult, and professionally registering your key brands, slogans and logos as trademarks give your business far greater protection and a more valuable, secured asset.
The JMW intellectual property team has expert knowledge and commercial experience to ensure that your investment in your brand is worthwhile for many years to come. We adopt trademark portfolio strategies that align with each individual business’ short, medium and long-term goals.
We use our experience and expertise to advise our clients about any risks of examiner refusals, or earlier registered marks at an early stage. This allows them to prepare for, mitigate, or resolve these prior to investing in their brands.
We find our process ensures there is a lower risk of receiving a rejection, costly oppositions from earlier trademark owners, or indeed even more expensive court proceedings from the same.
A strategically secured and managed IP portfolio can be extremely worthwhile, giving your business the competitive edge in every relevant market, and making your business an attractive prospect for investors or buyers.
We will help you through the process of registering and creating a strategy for your intellectual property assets to ensure they are adequately protected.
How JMW Can Help
Our experienced intellectual property law solicitors will guide your business through the following:
- Identifying where and when your IP should be registered
- Identifying any unregistered IP assets, and advising as to internal practices and procedures to protect them
- Monitoring and protecting your IP against infringement
- Helping to identify suitable insurance cover
- Valuing your IP to increase revenue or reduce costs
Intellectual Property Registration
Some intellectual property rights have some level of basic protection without the need to register them in any given jurisdiction.
However, the benefits of registering are numerous and important. Most sophisticated businesses regularly register their key brands, logos and straplines as trademarks; their new products as registered designs; and their inventions as patents.
IP registration comes at a comparably low cost, and without a cogent strategy to do so, businesses can expect to have to expend a lot more in time and resources trying to enforce their unregistered IP rights when infringed.
Registration also allows businesses (and their competitors) certainty, in relation to the scope of their rights. For example, if you were a business trading in Cheshire, your unregistered passing off rights would likely be limited to that locality. However, obtaining a trademark would give you national protection, without the need to be trading elsewhere.
In some jurisdictions, such as the USA, and certain rights like copyright and patentable innovations, registration is vital. Indeed, these days many third-party marketplaces require your business to have registered rights if you wish to take down a copycat.
Monitoring Your Intellectual Property
Once registered, JMW’s intellectual property law team will set up systems to monitor others seeking to register or sell similar products or services that could infringe your IP rights in key markets.
This includes software that monitors companies seeking to set up using your name on social media and Companies House, buy similar domain names, and offer for sale products on marketplaces worldwide.
In addition, we have a team of Trading Standards specialists who will assist with liaising with relevant agencies to prevent the importation of, and dealing in, counterfeits.
With JMW’s help, you will significantly reduce your business’s management time in monitoring your IP and speed up takedowns that could harm your business.
Intellectual Property Insurance
As a result of online detection, a growing number of businesses are making intellectual property infringement claims, but many are unable to take action due to the perceived costs involved. With intellectual property being an asset like any other, it should be insured, given its high value.
The intellectual property solicitors at JMW work with leading IP insurance providers to easily place insurance cover on your business’s key intellectual property assets, making sure you have peace of mind that it is covered.
FAQs About Intellectual Property Registration & Strategy
Intellectual property is an incredibly important asset to many businesses, but it can be difficult to understand how to go about protecting your creativity and hard work.
The team at JMW works hard to eliminate those difficulties by answering frequently asked questions.
What is a registered trademark?
A registered trademark is a brand that has been registered at the intellectual property office.
It affords its owner the right to stop others from using their brand (or a similar variation) in relation to specific goods and services.
Any business can have its name, logo or slogans professionally registered. Some businesses have colours, 3D shapes or smells registered, and though this is far less common, it shows that there are many types of intellectual property that can be registered and protected as trademarks.
Does my trademark protect my business overseas?
Trademark registrations only protect a business in the country of registration. For instance, a UK trademark won’t help you in the USA or Australia. In addition, having a trademark in the UK does not necessarily mean that you can use that brand worldwide; there may be other, earlier users of that brand in other countries.
If your business is planning to operate overseas, it is important to seek professional guidance on clearance searches and freedom to operate advice from our experts, so that you do not fall into any liabilities when entering those markets.
If you wish to protect your brand globally, our team can help you to do so, thanks to our trusted partners in almost every territory or market you could wish to enter.
Is it expensive to register my brand?
The cost of registering your brand as a trademark is often dwarfed by the cost of failing to do so and allowing a competitor to divert trade by using your brand, or by the costs of enforcing your brand rights under the law of passing off (which protects unregistered trademarks).
Our usual indicative professional costs are below:
|Clearing and advising upon registrability, drafting the specification and filing a UK trademark||Around £1000 plus Intellectual Property Office fees|
|Clearing and advising upon registrability, drafting the specification and filing an EU trademark||Around £1000 plus Intellectual Property Office fees|
|Registering IP rights internationally||This depends upon the jurisdiction, but is usually between £2,000 and £3,000 per jurisdiction|
*These will depend upon the number of classes and do not include any applicable VAT.
What if the UK Intellectual Property Office refuses my trademark on “absolute grounds”?
The examiner at the UK Intellectual Property Office (IPO) may reject your trademark application on the basis of “absolute grounds”, which often means your mark may not meet the basic requirements to function as a trademark. As a simple example, you would not be able to register the brand ‘APPLE’ to sell apples, because consumers will see this as a descriptor of the goods, rather than a unique brand name.
Our IP team have a great deal of experience in being able to overturn and/or resolve examiners’ refusals, whether that be by collating and submitting evidence of acquired distinctiveness, or by legal argument alone.
What if another business “opposes” my trademark application?
If you receive a notification that another business intends to or has already opposed your trademark application, it is important that you contact our IP team. The notification may include cryptic form numbers such as TM7a, or TM7, and it can be hard to determine what your next steps should be without specialist legal advice.
In these circumstances, our IP team will first provide you with clear and unambiguous advice as to the likely chances of success against such opposition and the commercial effect the opposition and any related court proceedings may have on your business. We can also help you to devise a strategy to resolve the issue.
It may be the case that we believe you have good chances of defending the opposition, and that we see you through to a successful decision in this respect. Alternatively, it may be the case that what you require is some form of co-existence or settlement, in which case our team’s powerful negotiation strategies can ensure a positive outcome for your business.
What if another business tries to register a similar trademark?
If you already own a registered trademark, you may receive a notification from the Intellectual Property Office that another business is seeking to register an identical or similar trademark. It is very important that you take action when such a notification is received. Usually, there is a time limit of two months, although our IP team can help you to extend this by another month if you need more time to develop a response.
Once instructed, our trademark experts will assess the likelihood of success of any opposition and, if necessary, prepare the papers for doing so. In addition, our team will advise your business on the potential risk that the business that is seeking to use and register a similar mark will cause your business damage in the real world as a result.
Do trademarks need to be renewed?
Yes, trademarks must be renewed every 10 years. Costs for doing so will vary depending upon the number of classes for which the mark is registered.
Renewal is also a good opportunity for you and our trademark experts to assess whether the mark has been used as registered, whether you intend to use it going forward, and whether it needs to be renewed. Alternatively, it may be that the particular trademark in question no longer fits your business needs, in which case we can help you to pursue a new filing that better suits your requirements.
My product has a unique design, can I protect it?
Yes, the UK has a registered design protection regime that is quick, and efficient. There is no examination or opposition process and therefore the application process can seem relatively simple.
However, the value of any registered IP lies primarily in the ability to enforce those rights and prevent infringement. For example, in a design context, to stop someone from using a similar design.
An incorrect registration can narrow the scope or outright invalidate your rights to protect your designs, and make it impossible to prevent competitors from adopting similar product designs. It can even draw your competitors’ attention to your product designs, which they can then copy if the designs are not adequately protected.
Our experts can advise you on filing a valid, strong, and future-proof design right application that ensures you are protected if your design rights are ever threatened by infringement.
I create artistic works, can I register these for protection?
Artistic works are usually protected by copyright. In the UK, copyright is a right that arises automatically as soon as a work is created in a fixed form.
There is no need to register your copyright. Recently, the UK has seen the emergence of several service providers (mainly internet-based) that offer to “register your copyright”. This is not the same as registering your trademark with the IPO.
These service providers are not linked with the IPO, and all they can do is maintain a record of your copyright work, for a fee. This is largely irrelevant when it comes to copyright infringement proceedings, and unnecessary if you have collected evidence of your creation of the works in question yourself.
It is important that you personally maintain good records of your creative works, showing the time and date of creation. If you find a copycat, or someone who has taken important parts of your work, it is important that you contact a legal expert.
Our team can advise you as to your chances of success in a claim, the strategy to be followed in obtaining your desired result, and how to protect yourself from infringements of your copyrights in the future.