Running your own business can be extremely challenging, especially when you are thinking about building and developing your brand. Trade marks are essential for protecting a company’s brand identity, reputation, and market position. They offer legal protection, build consumer trust, and contribute to a brand’s overall value and success in the marketplace.
Creating a business, product, etc., takes a great deal of time and effort; however, once done, all reasonable steps need to be taken to ensure your creations are protected, or all the hard work and goodwill generated could be for nought.
We believe every business should take steps to protect its identity and what it creates. To take you through what can be a complicated legal process, we invited Michael Coyle, Solicitor Advocate and founder of Trademarkroom.com, to explain the importance of protecting intellectual property and how his company can help you to do it.
Trademarkroom.com specialises in global brand protection and international trade mark portfolio management. The Trademarkroom offers a wide range of services, including:
- Pre-filing searches and advice;
- Preparation and filing of trade mark applications for both word and figurative marks in any country in the world;
- Continuous support and advice throughout the application process;
- Post-registration portfolio management and advice;
- Licence and Assignment services.
The Trademarkroom team consists of 5 full-time Solicitors and Trainees who have some 40 years of industry experience between them.
The firm prides itself on offering a business-friendly and client-focused service. Offering the personal touch and always being available to speak over the phone, the Trademarkroom can offer a helping hand throughout the process of brand protection.
This allows you the peace of mind that your trade mark registrations are being handled by humans who care.
Our aim is to pass on some guidance and knowledge to our clients, ensuring the world has a better understanding of trade marks.
The Trade Mark Search
One of the most important steps in the trade mark registration procedure is performing a trade mark search. You won’t know about any registered trade marks that could jeopardise your trade mark application, and therefore, it is highly recommended that you don’t file blind.
It is always a good idea to proceed with an advanced search in addition to a basic search.
The basic search identifies identical trade marks for identical goods and services, whereas the advanced search goes into more detail by identifying similar and identical marks, performing a Companies House search, an internet search, and a domain search.
We give you the results along with a thorough letter of advice outlining any possible risks. You will have a clear understanding of any possible risks to your trade mark application after you receive the search results, so you can move forward with the trade mark application.
Filing in the UK
Once a search is carried out, you are then ready to move forward with the application, save in the knowledge of any potential risks.
The next step is to prepare the class specification. Trade mark applications are categorised into classes based on the type of products or services they represent. There are 45 classes covering all goods and services. We will assist you in ensuring that your trade mark application is filed in the right classes, covering the goods and services you wish to provide under your brand.
Once the class specification is completed and you are happy with the rest of the details of the application, we can then prepare and file the application through the UK Intellectual Property Office (UKIPO).
Once your application is submitted, the UKIPO will examine it to ensure it meets the necessary requirements. If there are any issues or objections, you may be required to address them. If your application meets all requirements, it will be published in the UK Trade marks Journal for a period of two months.
During this time, third parties can oppose your trade mark if they believe it conflicts with their existing rights. If no one opposes your trade mark during the publication period, and the UKIPO is satisfied with your application, your trade mark will proceed to registration.
Once you are protected in the UK, you can open your eyes to filing further afield. The Trademarkroom team can remain with you every step of the way.
Trade marks in the US and Canada
Obtaining a trade mark in the US and/or Canada is becoming more and more crucial for companies as they seek to protect their products and services.
Waheedan Jariwalla, our in-house US attorney, can help and support you during the trade mark search and application procedure. There are some differences in the process for filing a trade mark in the US and Canada, and Waheedan is on hand to guide you through the process.
The Examiner at the US Patent and Trade Mark Office takes on a much more involved role, and they will refuse an application themselves if a conflicting mark is registered rather than require the earlier mark owner to take the step.
Waheedan Jariwalla is a dual-qualified UK Solicitor and US trade mark Lawyer. She has significant experience filing trade marks in the US and can offer you guidance and advice on the best way to proceed.
“I love advising Clients from across the pond, and often we file in the UK/EU and the USA simultaneously so the Client has a portfolio to which they can build upon”.
Trade Marks in China
Michael recalls his frustration in dealing with China twenty years ago but feels those days when China was a trade mark pariah to be long gone. At the Trademarkroom, we did so much business in China from 2010 to the pandemic that we have employed a Shanghai lawyer who is seeking to become dual-qualified in the UK as a Solicitor.
UK businesses have become much more interested in obtaining trade mark protection in China, and our Yann Tang can help with any Chinese trade mark-related queries. Yann is well-versed in the Chinese trade mark system, having worked as a qualified lawyer specialising in intellectual property law in Shanghai.
“I have lived and worked in the UK for almost three years now and feel I can be a constructive and useful bridge to the commercial world in China. The Trademarkroom can lift the mystique which many see as the world of Chinese commerce”.
Global Trade Marks
Our Global Trade Mark directory is one of our unique offerings. We have built a network of international agents around the world, allowing us to file in any country you wish.
Our website details the costs related to each national application, including the search options we offer. We pride ourselves on offering a cost-effective and competitive service, having built such a network through our longstanding presence within the industry.
We can also support you in an application filed through the World Intellectual Property Organisation Madrid system. This allows you to file one application in multiple countries around the world. This can be a more straightforward route to expanding your trade mark portfolio, depending on your target countries. The team is on hand to talk you through the whole process, ensuring it’s the right step for you.
Watch Service
In addition to providing services to assist in registering your trade marks, we also provide services that will support you, post-trade mark registration.
Once your trade mark is registered, it is important that you are managing it correctly. Any other person or company can file an identical or similar trade mark for the same or similar goods and services in your region, which you need to take action against.
It is important to remember that in certain countries, the Intellectual Property Office will not refuse applications based on existing registration. Therefore, it is the trade mark owner’s responsibility to contest any application that would jeopardise their protection.
With our Watch Service, you can monitor and analyse any marks filed which may be deemed similar to your brand. Every two weeks, we compile a comprehensive report that contains marks of all risks and a high-risk report that shows marks that are of greater risk.
With the information provided in the reports, you will be able to make a well-informed decision on whether you wish to challenge any of the marks presented in the reports.
This is essential to ensure you are one step ahead of the market and can effectively protect your brand from confusion with competitors.
Solicitor and senior Intellectual Property Law Consultant Ellis Sweetenham has worked with many clients with international trade mark portfolios and explains why a watch service is important.
“When managing your trade mark portfolio, a watch service is a must. Whether you have 1 or 100 trade marks, having the knowledge to take action to protect your rights is essential.”
Trademarkroom App
The Trademarkroom Blockchain App provides a cutting-edge method for generating NFTs and Smart Contracts for intellectual property and trade marks. Using blockchain technology, the TMRAPP allows for an increase in blockchain security when storing trade mark documents and ownership records, which is one of the application’s main advantages.
The application has a robust ownership system for legal documents in addition to its high level of security. Using the programme, you may generate ownership records that are maintained on blockchain, which makes them transparent and easily available to the relevant parties.
There will be less room for error and increased productivity thanks to the automated system.
The app enables businesses and individuals to maintain their trademarks more easily and feel secure, knowing that their intellectual property rights are safeguarded.
Michael Coyle, who is a leading legal voice on blockchain, says of the importance of TMRAPP, “Blockchain is not going away. It adds an extra layer of protection for any brand owner and is a smart way of securing your trade marks.”
If you would like more information on trade marks from Michael Coyle and his colleagues, visit www.trademarkroom.com, or email tmr@trademarkroom.com or telephone 02380 000190.