Protection
Filing and prosecuting Trade Mark and Design applications to registration.
Advising on protecting business, company and domain names.
Common law rights.
Filing and Prosecuting Trade Mark or Design Applications
Dealing with formalities and application procedures, as well as negotiating with Registries and third parties, whether in the UK or abroad, to overcome any objections and prosecute an application to acceptance.
Many of the objections that are raised by Registries in different jurisdictions can be anticipated, ensuring that your mark or design proceeds to registration and costs are kept to a minimum.
A more detailed description of the filing process for UK, European Union, International and U.S.A. trade marks, and UK and Community designs, can be found by clicking the links for those territories.
Business and Company Names
A business or company name registration gives limited rights and is not a substitute for a trade mark registration.
If you intend to trade in goods or services, you should ensure that your business name does not conflict with a pending or registered trade mark, even if you decide that you do not want a registration of your own. It does not have to be identical with a trade mark to cause possible conflict.
You should also consider the possibility of a conflict with other traders' common law rights particularly the tort of passing-off, and also with copyright if you intend to use a logo or picture to promote your business.
A variety of searches are available to suit your particular needs and to provide guidance in preventing conflict with a third party.
Domain Names
With the continuing growth of the Internet and e-commerce, domain names are a developing factor in trade mark law. Domain names are registered on a first come basis.
Like company names, a domain name registration gives limited rights and is not a substitute for a trade mark registration.
Simon Walters® can provide Internet-related advice on cyber piracy and domain name disputes.
Most disputes can be resolved by agreement. If they cannot, before resorting to a Court action, one can take advantage of various domain resolution services.
they may be guilty of passing-off.
Problems Relying on Passing-off
Often, a long period of use is required and enforcement of common law rights can be time-consuming and ultimately expensive.
A registered trade mark is generally much easier and cheaper to enforce and therefore has many advantages.
Outside the UK
In most countries, mere use gives little if any protection - the only way to protect trade mark rights is through a registration.
Common Law
When referring to trade marks, common law rights relate particularly to:
Unregistered Trade Marks
Business and Company Names
Get-up and Packaging
Passing-off
If you do not have a registered trade mark, you may still have common law rights. Passing-off occurs when a trader represents their goods and/or services as those of somebody else and damage to the goodwill of the latter's business is the result.
If a competitor:
Uses the same or a similar trade mark, or
Uses the same or similar get-up or packaging, or
Implies that its business is connected to yours in some way,