Safeguarding your brand/logo
I want to register a trade mark, how do I go about it?
The trade mark registration process is designed to be straightforward to enable anyone to register a trade mark - see www.ipo.gov.uk. However, you may need legal assistance if you are registering a mark which is similar to one that is already registered, if you are registering in a number of classes or if you simply want to ensure that you are obtaining the widest possible protection for your mark.
I want to licence my trade mark to a third party, how do I do this?
A licence of a trade mark should be evidenced in writing and if the trade mark is registered the UK IPO may need to be notified of the licence. Legal advice should always be taken when considering this step.
Protecting your business information
I need to release confidential information to a supplier or a consultant, how do I protect this?
See faqs under “Planning a joint venture”. A written agreement should be put in place.
Logo/name being used by others
My registered trade mark is being used by another company?
One of the advantages of registering your trade mark is that it makes life much easier when you need to deal with others who may be using it. Before taking legal advice it is helpful if you can ascertain the following:
- Is the trade mark being used in relation to the same type of goods/ services
- Do you have any proof that your potential customers have been mislead
- Copies of the trade mark being used e.g. web page print outs or marketing information.
This will make it much easier for a solicitor to assess the next steps to take.
My logo is not a registered trade mark, do I have any protection?
Even if a logo has not been registered as a trade mark, the law still affords some protection against a practice known as ‘passing off’. This arises when a competitor uses your logo (or a deceptively similar logo) in an attempt to fool your customers that the competitor is really you and thereby persuading your customers to buy goods or services from the competitor instead of you.
We would usually recommend registering a logo as a trade mark since an action in passing off is much more likely to result in costly litigation than one for trade mark infringement.
Using another person’s logo/name
I have been informed that I am ‘infringing a trade mark’ what does this mean and what do I do?
‘Infringing a trade mark’ means using a name or logo which has been registered as a trade mark by someone else or is deceptively similar to such a trade mark in a similar type of business. You may receive a letter alleging that you are using someone else’s trade mark and asking you to cease use and to give a series of undertakings. In these instances it is always best to speak to a solicitor as soon as possible since
- there will inevitably be financial consequences to signing the undertakings; and
- failure to act may result in costly litigation proceedings being commenced against you
What checks do I need to do to ensure I do not use someone else’s name?
There are a number of checks which should be undertaken to identify whether a name is free to use. A simple check can be carried out at the UK Intellectual Property Office and another at Companies House. If you are concerned about this issue we can assist you to help you carry out the right checks and to advise you as to how best to protect your name.
