Guide to Trademarks

WIRE members regularly ask for advice on how they can make sure that no one “rips off” their business and their hard work by using their name or logo.

The good news is that things do exist that protect you. There are two main ways, which we can call “the long way” or “the short way”. The long way is for you to just carry on trading and hopefully building up a good name and reputation. If someone then starts using the same name as you to sell the same goods and services, then you can take legal action against them to stop them. Your legal case would be that they were “passing themselves off” as you, and they were creating confusion in your marketplace. You could ask a court to issue an injunction to stop them doing it whilst the court looked into whether they were entitled to, and you would start court proceedings at the same time to ask the court to rule that they were forbidden to do it again. You would also ask them to pay to you all the profits they had made out of passing themselves off as you. As you can imagine, we have not called this “the long way” for nothing. It could also be called “the expensive way” or the “very uncertain way”. A better method is to use “the short way”.

You should pick a name that is capable of being registered as a trademark. Not all names are registerable, so if you are committed to a name that isn’t you may be left with just the protection of “the long way” set out above. If however you choose or you already have a name that is capable of registration as a trademark, then you can make that name yours and solely yours in the particularly markets that you trade in (eg food, or computer services)

PURPLE service covers precisely the areas discussed above.

Under the PURPLE TRADEMARK SERVICE, you can ask a specialist Trademark attorney whether your name can be registered as a trademark, and if cannot, what name might be. Of course before you started using a new name you would have to check whether anyone was already using it as a registered trademark!

Any discussion in the run up to carrying out searches or trademark applications are entirely free of charge, so anyone from WIRE who wanted an initial consultation by email or phone on issues like whether their mark is suitable for registration can do so without fear that they’ll get a bill! If after that initial free chat you wanted the PURPLE team to carry out a formal search to see whether a name was already being used by someone else you would be charged £350 + VAT per name or trademark mark searched . If you did then want to try to register a name (and the PURPLE team would have advised you on the prospects of success) it would cost you £520 + VAT if you wanted the name to

be registered in one area, and an additi onal £100 + VAT per extra class covered.

As you can see, the majority of trademark fees are fixed it’s only if you meet significant objections that fees can increase. In addition to this helpline, the Government itself offers some very easy and practical help via a range of websites. For example:

• What is a Trade Mark?

www.ipo.gov.uk/types/tm/t

about/t

whatis.htm

• Benefits of TM protection

www.ipo.gov.uk/types/tm/t

about/t

protect.htm

• Considerations before applying f

or a TM

www.ipo.gov.uk/types/tm/t

applying/t

before.htm

As you can see, you can take action but it can cost you a little bit of money or a lot of money. A key question therefore is “what are the chances of anyone really using my name?” if you think the chances are slim or less, then in all reality it may not be worth spending the money. If however you have big plans to grow and maybe even to ultimately sell your company, anyone looking at your business to invest in it or to buy it will want to see that your Intellectual property rights are protected, so it may be a very worthwhile investment.

With membership of WIRE you receive a free legal support scheme called PURPLE. Once you sign up to join PURPLE (it is completely free to join) you can ring your legal team whenever you have any sort of personal or business legal enquiry. They will answer your enquiries free of charge and if formal legal work is needed they will quote you a price and you are then free to go with them or to “shop around”

Simon McCrum, Managing Partner

Darbys Solicitors LLP