The Problems with DIY Trade Mark Registration
Can I register a trade mark myself?
The internet age has empowered us all in the art of self help and it is possible for business owners to register their own trade marks online at the UK Intellectual Property Office (IPO), or at the Community Trade Mark Office in Alicante. However, this approach is fraught with risks. We routinely see instances of ‘DIY’ trade marks being refused because they didn’t meet the criteria for registration, or were registered with so many weaknesses that effective enforcement of the ultimate registration would be difficult or even impossible. In many cases it is only when the time comes to enforce your trade mark registration against a competitor that the issues come to light. By then, it’s almost always too late.
The complexities of the legal process
Completing a form online to register your trade mark is only a small part of the process. Prior to filing your mark, it’s advisable to conduct an availability search to determine whether the mark is free for use and registration in the territory in which it will be used. Trade Mark Attorneys are qualified to advise on such searches, and to explain how marks found in the search may or may not conflict with the proposed brand.
Once the search has been conducted, it’s necessary to decide which mark, or which part of the brand you use, merits registration. A Trade Mark Attorney will be able to advise you of a filing strategy which will best protect the Intellectual Property that your business owns, or intends to own, as you grow.
Equally important is to decide which goods and services are to be covered. An Attorney will spend time researching your activities, talking to you to determine your plans for use, and carefully drafting the specification to cover what you do or intend to do under the mark. A description which is too narrow, wrongly worded, or in the wrong class, could render the registration worthless.
We recognise that it’s not always easy to set aside fees for a process which you could read up on and accomplish yourself. However, this is risky and can be a false economy when problems are subsequently encountered. Engaging a competent and experienced attorney at this stage can save you money in several ways:
Firstly, it lets you get on with what you do best – running your business. If your DIY application has run into complications, a professional can be engaged to attempt to rectify the mistakes which have been made. However, it isn’t always possible to do so, and the only way to rectify the situation may be to start again, once more diverting your valuable time. The money which you have spent on filing may also be lost; the IPO do not refund filing fees if the application is unsuccessful, as these fees cover the costs of examination and other administration of the Office.
Secondly, although using an attorney to register your mark will result in fees for their work, these fees are small in comparison to those incurred when something goes wrong. As the saying goes: “If you think it’s expensive to hire a professional, try hiring an amateur”.
Imagine a competitor starts using the same or similar mark to your own, and you wish to enforce the registration against them. You attempt to do so, and find that you’ve protected the wrong mark, the wrong goods, or that your registration is liable to cancellation on the grounds that it is not being used as registered. As a result, you may need to take action on the basis of the common law tort of passing off, based on your unregistered rights through use. Such actions are expensive and time consuming, and I have seen parties who have to cease trading under a certain name and rebrand, as they cannot afford the enforcement process even though they have a strong case.
Registration of your mark is not the end of the matter! It’s really important to attend to any change of address at the IPO, otherwise any notices regarding your trade mark rights will not reach you, certainly not in time to take action. We ensure that this does not happen by acting as address for service for our clients’ registrations, and ensure that any changes are actioned without delay.
Further, using specialist software we monitor all renewal deadlines and advise our clients of upcoming deadlines. In fact, we do not remove a deadline from our system until we are 100% sure of the instructions we have been given.
Instruct a professional with knowledge and experience of this area of complex law. Otherwise, you may find that you end up with no effective protection at all.BACK TO NEWS & OPINION