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seven common trade mark mistakes

Seven common mistakes made by trade mark owners

1) Not registering a trade mark

Often a business assumes that it doesn’t need to bother with trade mark registration. However there are several advantages to registration, including gaining rights in the name to allow the owner continuous uninterrupted use and being able to enforce the mark against others.

2) Not conducting a trade mark search prior to use and/or registration

Using a mark without finding out whether the same or similar mark is already registered is a risky course of action. This could lead to an action for trade mark infringement and/or passing off. Settling or litigating trade mark claims is not a good way to begin the life of a new business.

When a trade mark application is filed in the UK, the Intellectual Property Office will examine the mark to see whether any prior rights exist. Filing an application in the face of an earlier conflicting right may mean resources wasted on application filing fees, and could also lead to costs in fighting an opposition.

3) Believing that a company name or domain name will provide sufficient protection

Registration of a name as a company or URL does not provide protection in the same way as a registered trade mark does. Your Companies House registration and domain provides at best a very weak protection and leaves you needing to rely on the common law of passing off. Passing off actions are difficult, time consuming and expensive.

4) Not enforcing trade mark rights

Once a trade mark is registered, it’s vital to monitor whether anyone else applies to register the same or similar mark. Another mark on the register which is the same or similar will weaken the rights of the earlier proprietor.

Brand owners are further advised to watch the market and competitors to make sure that no other businesses are using the mark without their permission.

5) Allowing the brand to become generic

The brand should not become the common name for the products, or legal protection will be lost. The terms Sellotape, Thermos and Escalator all began life as trade marks.

Owners should establish guidelines for how the trade mark is used, and use it as an adjective, not as a noun or verb; for example LEGO® toy blocks, not ‘LEGOs’.

6) Not using the ® symbol

It is not compulsory to use this symbol once the mark is registered, but it serves as useful notice to third parties of a brand owner’s rights.

7) Failure to maintain registrations

If a registration is used and renewed when it falls due, trade marks can last in perpetuity. Owners should ensure they keep good records or entrust the safekeeping of all records to their trade mark attorney who will have specialist software for monitoring renewal deadlines.

November 8, 2015 Rachael