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DIY trade mark registration

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 European Intellectual Property (EUIPO) 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 trade mark 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.

Complexities of the trade mark registration process

Completing a form online to register your trade mark is only a small part of the process. Prior to filing your trade 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 your 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 valuable intellectual property that your business owns.

Equally important is to decide which goods and services are to be covered. A trade mark 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 with the trade mark. A description which is too narrow, wrongly worded, or in the wrong class, could render the registration worthless. Similarly, mistakes with the selection of classes and specification may trigger unforeseen TM7A Notices of Threatened Opposition from other trade mark owners.

False economy

We recognise that it is tempting to save on professional fees for a process that on first glance looks ‘doable’ however this is risky and is a false economy when ‘the wheel comes off’. Engaging an experienced trade mark 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 UK IPO and the EUIPO do not refund filing fees if the application is unsuccessful.

Secondly, although using a trade mark 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.

You may then need to take action on the basis of the common law tort of passing off, based on your unregistered rights. Such actions are very 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.

Trade mark portfolio management

Registration of your trade 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 your trade marks, and ensure that any changes are actioned without delay.
Further, using specialist software we monitor your renewal deadlines and advise you accordingly. In fact, we do not remove a deadline from our system until we are 100% sure of the instructions you give us.

Recommendations

Trade mark law is a very complex area. It truly pays to instruct a competent a professional with the specialist knowledge and experience to do the job properly. Otherwise, you may end up with weak or no trade mark protection at all.

Don’t let fate decide your business’s future. Contact Rachael or Bill Ward for the professional advice you need using the simple form below.

Ward Trade Marks Limited is a Bury St Edmunds-based specialist trade mark attorney firm

Please complete the details below and we will be in touch.

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October 1, 2015 Rachael