Trade Mark Registration and Protection

Having developed a strong market position, where customers easily identify your products or services, it makes good business sense to protect that valuable asset. Registered trade marks are vital tool to do this.

Our lawyers have an established, experienced and efficient track record as a proactive global trade mark registration practice. We offer fixed fee filings, insurance products (see below) as well as a watching service, keeping you informed on what others are registering that could effect you as well as trade mark insurance (see below) to cover you if and when your trade mark is used by someone else.

Solicitors for Trade Marks

Trade mark filing and watching services sit alongside our licensing practice and other specialist IP protection and exploitation services making sure that you grow your business and trade mark portfolio alongside each other.

Before investing time and money, speak to our lawyers to establish whether you can trade mark your product or service, whether it makes sense to do so, all available options and the cost and how it works. We are a leading law firm in this field.

Benefits of Registering a Trade Mark – Exclusive Rights

Once a trade mark has been registered you can act decisively and quickly against copycat businesses or in relation to any form of trademark infringement. A trade mark gives you the exclusive right to use your brand in relation to what you do.

How to register a Trade Mark

In order to successfully register a trade mark, the first thing to do is to check that nobody else is already using it in relation to the same or similar goods and services.

Before considering applying, you need to ensure that the mark being sought isn’t purely descriptive of your products or services or of any characteristics of those products or services. A key consideration when choosing a word or phrase is to avoid words which has become common language in your industry.

Trade mark applications in the UK normally take about 4 to 6 months. European Union Trade Mark (EUTM) applications, which cover the whole of the European Union including the UK, currently take about 6 months to become registered.

Our solicitors are experienced in undertaking trademark searches as well as registering trade marks. Get in touch to find out how we can help.

Trade Mark Disputes and Infringements

Whilst there is a clear advantage in having registered trade mark protection in that with such protection it is not a legal reuirement to prove that the infringement has damged goodwill or reputation, in practical terms, trademark dipsutes can be complex and evidence is key.

With a trademark dispute it is also vital to act quickly. Having spent time and money registering your brand or product, even where you can claim damges, the best remedy is to prevent or stop the infringement very early. This means staying alert and being forceful in enforcing your legal rights. Collecting evidence and potentially going down the injunction route are strong options.

As with any commercial legal dispute, it is always worth remembering that having a solid legal case does not necesarily mean entitlement to significant damages nor does it mean guaranteed recovery of any judgment sum awarded. Good and experienced trademark dispute lawyers guide clients on the best legal and commercial considerations and steps to take. This is an area where Briffa has deep experience and a strong reputation – it’s one of our “trade mark” areas of practice!

No Trade mark? Possible Passing Off Claim? 

A trade mark which has been used and has some goodwill attached to it, can be protected in some countries under the common law of passing off.

Passing off occurs where a competitor deliberately seeks to benefit by confusing a buyer into thinking that the goods/services on sale have some connection with your product or service, resulting in your business suffering loss and being damaged.

If you are only able to rely on common law rights i.e you don’t have registered trade mark protection, proving passing off can be expensive, not just in terms of lawyers fees and court costs but also in obtaining sufficient evidence.

Evidence for a passing off claim will generally need to include :-

  • evidence of ownership, age and extent of goodwill in your business
  • the likelihood of confusion to consumers
  • loss and damage

The advantages of trade mark registration include :-

  • You have stronger rights to use and protect a registered trade mark.
  • A legal claim for infringement of a registered trade mark is generally easier, quicker and less costly than an action for passing off.
  • Licensing of a registered trade mark is far safer.
  • Having a registered trade mark in the UK is a good platform for applications in many overseas countries.
  • Having a mark on the register warns others of your claim to that mark and thereby acts as a deterrent.

Contact our solicitors if you need legal advice on a passing off issue, claim or dispute.

Briffa Trade Mark Services

Get in touch if you need legal advice or solicitors for :-

  • Making trade mark applications in multiple jurisdictions.
  • Opposing a trade mark applied for registration by others.
  • Another company is using your trade mark, get up or brand.
  • You want to licence your brand into new product areas.
  • You are ready to sell your company and want to make sure you have all the trade marks a buyer will look for in place.
  • Advice on trade mark disputes or infringements.
  • Any other legal advice on trade marks

Trade Mark Protection Fixed Fee Service

BrandProtect is a cost effective way of protecting all your brands by providing you with access to specialist lawyers and a fighting fund for a payment of just £190 including VAT per mark per year.

BrandProtect members are given advice on any dispute concerning the trade marks that are covered by the BrandProtect service and access to a fighting fund of up to £100,000 to protect your brand.

As you are aware of a problem with one of your trade marks you simply call the BrandProtect helpline and you have direct access to Briffa’s specialist lawyers. You can make as many calls to the BrandProtect helpline as you need, all for just the annual membership fee.

Book a free meeting or ask us a question.

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