Tag Archives: cost of trademark

Trade Marks

Why Trademark? Essential Thinking Inspired by The Road Less Stupid

Trade MarksIn the book, “The Road Less Stupid: Advice from the Chairman of the Board” Keith J. Cunningham describes how smart people do dumb things. Business is an intellectual sport, yet many entrepreneurs and business owners cause themselves problems due to their “excessive optimism and emotional belief in magic pills, secret formulas, and financial tooth fairies. (All balloons look good when they are filled with hot air.)” says Cunningham.

The key to getting rich (and staying that way) is to avoid doing stupid things”.

I notice people’s tendency to freely spend on magic pills, secret formulas, and financial tooth fairies as Cunningham describes them while postponing or overlooking obvious steps to protect their business. People want to buy things that promise them a way to make money, but something like ownership of intangible assets that will secure the foundations of their business is neglected. It’s boring intellectual property which they don’t even want to take the time to understand, let alone secure and protect.

Trade mark registration and brand protection are basic first steps to take, there is no sense in postponing or putting this off, and I’d suggest that anyone looking to think better should revisit this subject with an open mind

But do note Maynard Keys’ observation that “Most people, when confronted with a choice of changing their thoughts or proving there is no need to change, get busy on the proof.”

 

Trademark Registration and Brand Protection

I have just spent a few thousand pounds extending my Brand Tuned UK trademark registration to the EU and USA.

You may wonder why I would bother to do this. The name is nothing particularly special, the brand name is not generating any money for the Azrights business as yet, and we’re on the cusp of a serious world recession, so nobody wants to be throwing money around.

However, it’s a name I’ve checked is available to me to use and I want to secure my rights in it. It might be worth explaining my thinking in case it helps you to make decisions for your business.

I’ve seen how much inconvenience, hassle and expense people go through when they don’t take this basic step of protecting the brand name they’re using in key markets for their plans.

As a general rule, it costs ten times as much to deal with the complications that can arise when you don’t protect your name than the cost of registering the name in the first place

Names and trademark registration are very similar to the ownership of physical property and should be thought of in the same way.

If you simply squat on land on which you are developing properties and don’t secure ownership of the legal title, your tenure would be insecure. You could have the rights taken away from you or otherwise lose them. Someone else or events outside your control might shatter your peace and enjoyment of your property.  Do you want to risk that with your brand?

Who wants to pay stamp duty and solicitors’ fees that are part and parcel of transferring the title to land? Given the choice, I reckon many people would postpone this cost and avoid the expense of acquisition. However, they go through the buying process with physical property largely because they understand that it’s a necessary aspect of owning land, of building on the land, and developing their life or business around ownership of that land.

While the same applies to names that we use in business, this is less well appreciated.

The first step is to secure rights in a name by registering a trade mark in your home market. If you simply use a name without registering it, then you set yourself up for costly litigation if someone else also starts using the name or registers the same or a similar name first, making it difficult for you to co-exist.

While people commonly register their own trade marks, I wouldn’t recommend it unless you take a lot of time to understand how to do it properly. In the same way, I wouldn’t recommend registering your land yourself even though it’s as seemingly straightforward to do so now that we have the land registry system in place for physical property.

Cost of Ownership

If you use an experienced lawyer to do the work for you, the total cost might be £1,000-£2,000 including official fees (that is, the equivalent of stamp duty) in the UK. You could save on legal fees and just pay the official fees (stamp duty). However, based on the number of poorly registered trademarks I’ve seen, it’s not worth the saving to do your own registration. Ultimately, you want a piece of paper you can rely on when it comes to enforcing your rights in your name, not just a piece of paper.

The trademark registries in all the countries worldwide are online and make it seemingly easy to register your rights yourself, but if you want to be properly protected get the best lawyer you can afford to do the drafting and scoping of your trademark for you. Just accept it as the price of owning your brand name.

That first registration gives you 6 months’ protection worldwide meaning you get priority protection in most countries provided you go on to extend your registration to your chosen markets worldwide within this 6-month window.

I had registered Brand Tuned in the UK, and the 6 months’ time window expired on 14 June to extend that protection to other countries of my choice worldwide.

Why Extend Internationally?

For Azrights, a trademark I registered in 2006, I hadn’t bothered and have still not bothered to extend the protection beyond the UK. The fact that I’m bothering with Brand Tuned is indicative of why there is no universal strategy for trademarks. Much depends on your plans for the business.

Some businesses might not need to extend beyond their home market, while others will need to extend their trademarks to some countries but not others. No business, not even the big household name brands, will be able to afford to register in every single country worldwide. It’s a matter of risk mitigation and knowing what could go wrong in different countries.

At the end of this article I highlight why China is a market that some businesses may need to concern themselves about.

I haven’t bothered to extend Azrights beyond the UK, even though there are theoretical risks I face, primarily because Azrights, though it protects brands internationally, does so as a UK based business. It might attract customers located abroad but the work is always conducted in the UK and then extended internationally using the system provided for international registration of IP.

How Lack of Protection Can Hurt a Business

An example of why it’s important to think strategically when protecting a brand is provided by US online dating website plentyoffish.com launched in 2001. UK competitor “Plenty More Fish” set up in 2006 and in 2007 filed to register a fish logo and the words PLENTY MORE FISH as a UK trade mark. The US site opposed the application but lost because it did not have enough UK subscribers to be able to claim earlier rights in the UK.  It should have registered an EU trade mark as that would have blocked other businesses registering similar names in any country within the EU.

Their failure to do so, enabled another business in the same space to use a similar name and ride off the back of their marketing spend and success. This would never be allowed to happen within a country’s borders because it’s recognised that there would be a negative impact on the revenues of the existing business, not to speak of potential loss of reputation if the newcomer provides a shoddy service which customer confusion will inevitably lead to attribution to the bigger brand.

The Azrights UK trade mark currently protects the business in the EU but perhaps we may think again about whether to secure an EU trade mark given that the UK will be leaving the EU at the end of this year.

Azrights is not an online business. It’s primarily local, based in the UK, so although it would be highly annoying and inconvenient if a new business were to set up in other parts of the world using this name, it’s not a significant enough risk to justify filing internationally.

Why I Registered Brand Tuned Internationally

For Brand Tuned, on the other hand, I have a podcast by that name, and intend to create online products under the name, among other things. If someone else stole the name and registered or began using it in the USA or EU first, they could require me to rebrand in those countries. This seemed a risk not worth taking.

It’s necessary to have a name you can safely build your business around. Not protecting the name in these two markets could be a massive inconvenience for us, and it would be costly to make changes. That’s why I have registered in those markets. I didn’t need to pay much in the way of legal fees (the US lawyer’s fees were quite modest) and we handled the EU application ourselves. So, most of the thousands I’ve had to spend is purely down to the official fees in the USA and EU. That’s like a stamp duty you pay to get 10 years of ownership rights in your brand name.

To add context, mine is a lifestyle business. I’m not intending a big exit or any of the traditional things people associate with international trademarks.

 

China as a Risk for Those Manufacturing or Intending to Sell There

China is now the second largest economy on the planet and has become a key market for businesses worldwide. So, securing ownership of your brand in China should be an important part of your plans.

If you hope to manufacture or sell in China, it needs to be an early consideration to take steps to protect your trademark rights in China.

It is typical for businesses to outsource manufacturing of their products to China, and in doing so license their Chinese partner to use their trademark for that purpose.

In some cases, the Chinese manufacturer, or another entity in China, will hijack the brand, registering it as a trademark and securing ownership of the rights to it in China. Case law on this point is developing, but there is a risk that such a hijacker might bring an action against the manufacturer for trademark infringement, stopping production in its tracks. So, even if you manufacture but don’t sell your products in China, you need to secure local trademark protection.

 

Conclusion

As Keith J. Cunningham uniquely puts it, “the name of Napoleon Hill’s book is Think and Grow Rich. It isn’t “Use Your Gut and Grow Rich” or “Sit in a Dark Room, Om, and Visualize a Sack Full of Money Dropping on Your Head and Grow Rich” or “Do What You Love and Grow Rich.” It’s not about touching yourself, closing your eyes, or relying on fantasy economics (which are only effective in fantasies). And it’s certainly not a “Secret.” It’s THINK! (There are no secrets . . . just stuff you haven’t learned yet.)”

His book is well worth reading if you want to add to your tool belt, knowledge, and insights to support you in being thoughtful about your decisions and decision-making process prior to taking action.

As far as trade marking goes, you need to think seriously about getting your trade mark rights in place. You will have a more effective business if you build it on solid foundations, so make it a priority to secure your rights in your brand name immediately.

opposition uk trademark

Opposition to a UK Trade Mark

opposition uk trademarkPeople often ring us up when they receive a note of threatened opposition to their trade mark application so I thought it might be useful to give an overview of the UK Intellectual Property Office’s opposition process.

 

The UKIPO provides a number of guidance documents about UK oppositions which provide detailed information and advice about all aspects of the opposition process. Rather than duplicating those notes, I want to give you a short overview with weblinks to the relevant UKIPO information.

 

What is an opposition about?

 

All UK trade mark applications are published by the UKIPO for a period of two months (extendible by one month). Publication allows third parties to oppose registration if they consider that the UK mark should not proceed to registration.

 

There are many grounds on which you can oppose the registration. A common reason is that the published mark is confusingly similar to an earlier mark owned by you for the same or similar goods or services.

 

However, you can also oppose a UK mark if you consider that it should not have been accepted by the UKIPO: for example, if the published mark is descriptive of the goods or services or if it was filed by the applicant in bad faith.

 

For more information on the UKIPO’s website about oppositions, click this: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section

 

Outline of the opposition procedure:

 

The main steps in a UK opposition are as follows:

  • Usually, you will contact the applicant asking them to withdraw (or limit) their application under threat of filing opposition. Failure to do this may lead to you later losing costs even if you win the opposition.
  • You can oppose a UK mark by filing Notice of Opposition (Form TM7) before the end of the opposition period. This form sets out your opposition claims.
  • The applicant then has 2 months to reply by filing a Defence & Counterstatement. This is usually a denial of your claims.
  • If a Defence & Counterstatement is filed, each side is given 2 months to file its evidence. First, you have 2 months to file evidence in support of your opposition (e.g. evidence of the reputation or use of your earlier mark). Then, the applicant will have 2 months to file evidence in defence of its trade mark application.
  • When the evidence has been filed, the UKIPO asks if either side wants to have an oral Hearing. This is held before a Hearing Officer at which you or your lawyer will have the opportunity to argue your case in person. If neither side requests a hearing, the UKIPO will decide the matter based on the written evidence and legal submissions which have been filed. 
  • Within a few months, the UKIPO will issue its decision, upholding or rejecting the opposition either in full or in part, and awarding costs to the winning side.
  • Either side can appeal the decision of the UKIPO.

 

What happens before filing opposition?

 

If you (or your lawyer) become aware of a UK trade mark application which you believe should not be registered, it is usual to contact the applicant requesting that they voluntarily withdraw their application, in whole or in part. 

 

This is important because if you do not do so and you successfully oppose the mark, the UKIPO may penalise you on costs (i.e. you may forfeit some of the award of costs). You can extend the 2-month opposition period by an additional month if you apply to the UKIPO before the end of the initial 2-month period. This is done by filing a form TM7a for which there are no official fees. For more information on filing a TM7a click on this: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.3.

 

Filing a Notice of Opposition:

Notice of Opposition is filed by means of Form TM7. 

The standard official fee is £200. It is also possible to file a Fast-Track Opposition (TM7F) for a reduced official fee of £100 where you rely on limited grounds of opposition. 

Click on this https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.13 for more information about Fast-Track oppositions.

You can claim a number of different grounds of opposition in the standard Notice of Opposition (TM7). These are divided into two broad categories:

A.  – if you believe that the UKIPO should not have accepted the UK mark for registration. This might be because the UK mark is descriptive, generic, a standard term in the trade, or if you believe it was filed in bad faith. These are called Absolute Grounds of opposition.

 

B.  – if you believe that registration of the UK mark would be in conflict with your earlier trade mark rights (or other rights such as a design or copyright). These are called Relative Grounds of opposition.

 

Most oppositions are filed because the opponent is the holder of an earlier trade mark (UK mark, EUTM, or International mark protected in the UK) and registration of the later UK mark would be in conflict with the earlier mark.

The standard grounds (Relative Grounds) on which opposition are normally filed are:

 

  • Likelihood of confusion: you claim that the UK mark is the same or similar to your earlier mark for the same or similar goods/services such that there is a risk of confusion among the relevant consumers.
  • Reputation grounds: you claim that your mark enjoys a reputation in the UK (or the EU if it is a EUTM) and the use of the UK mark would take unfair advantage of or be detrimental to the repute or distinctiveness of your mark.
  • Unregistered marks: if your mark enjoys goodwill and reputation in the UK then regardless of whether it is a registered mark, you can oppose the later UK mark if you can prove that use of the UK mark would be likely to cause consumer confusion (in legal terms, that it would amount to passing-off).

 

For detailed guidance notes on how to complete the Notice of Opposition, click here:https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.4.

 

 

What happens after the Notice of Opposition has been filed?

 

The UKIPO will transmit the Notice of Opposition to the applicant who is given 2 months to respond by filing a Defence & Counterstatement (Form TM8). If no defence is filed, the UKIPO will reject the UK mark and costs may be awarded to the opponent.

If the applicant files a Defence & Counterstatement (Form TM8) within the permitted period, the UKIPO will forward it to you.  For more information on the Defence & Counterstatement, click here : https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.6. 

If the parties should decide to enter into discussions after opposition has been filed, it is possible to defer the next steps in the proceedings (including the filing of the Defence & Counterstatement) by requesting a 9 month cooling-off period. This request must be made, by both sides, before the deadline to file the Defence & Counterstatement by filing form TM9C. It is possible to extend the cooling-off period to a maximum of 18 months (if the parties file a TM9E before the end of the 9 month period). For more information about the cooling-off period, click here:  https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.8.

 

  

The evidence rounds in a trade mark opposition:

 

Your evidence:

 

After the applicant has filed its Defence & Counterstatement, the UKIPO will allow you 2 months to file your evidence in support of your opposition. This is factual evidence and not a legal argument.

The most common reasons for filing evidence are: 

 

  • if your earlier mark is registered for more than 5 years, you will normally be required to file proof of evidence of the use of your mark in the UK (or in the EU if your earlier mark is a EUTM). For more information on proof of use, click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §3.1.10.
  • If you claim a reputation for your mark, you will need to file evidence of your reputation in the UK (or in the EU if your mark is a EUTM). 
  • If you claim that your earlier mark enjoys a goodwill and reputation in the UK, you will need to file evidence of your reputation in the UK. 
  • If you claim that your earlier mark is a well-known mark, you will need to file evidence that it is a well-known mark in the UK.

 

Evidence is usually provided in a Witness Statement which is a statement of the facts which you rely on in your opposition. Supporting evidence (e.g. sample invoices or examples of advertisements) is attached to the Witness Statement as exhibits. Usually, the evidence can be filed with the UKIPO by email (and a copy must be sent to the applicant).

For more detail on the preparation of and the contents of a Witness Statement, click here: https://www.justice.gov.uk/courts/procedure-rules/civil/rules/part32/pd_part32#17.1.

For an example of a Witness Statement (bare-bones only), click here: https://assets.publishing.service.gov.uk/government/uploads/system/uploads/attachment_data/file/311793/completedwitnessstatements.pdf.

 

If, however, your earlier mark is a recently-registered trade mark such that your mark is not yet subject to the use requirement (i.e. the requirement to prove use of marks registered for more than 5 years), you may not need to file any evidence because, in these circumstances, you would be simply relying on the legal rights arising from your trade mark registration. In that event, you would not file any factual evidence and, instead, you (or your lawyer) would later just file legal arguments in support of your opposition. 

 

The applicant’s evidence:

 The applicant will be allowed 2 months to file any evidence it wishes in defence of its UK trade mark application. The UKIPO will forward a copy of your evidence to you (or your lawyer).

 

 

The decision of the UKIPO:

 

After both sides have had an opportunity to file evidence, the UKIPO will ask each side if it would like an oral Hearing. If neither side requests an oral hearing, the UKIPO Hearing Officer will decide the case based on the documents and evidence that have been filed in the proceedings and after giving each side the opportunity to file legal submissions. The Hearing Officer allows 2 weeks for filing legal submissions. The decision will normally issue within a period of 2 months thereafter.

 

If either side requests an oral Hearing, the UKIPO will schedule a hearing, which is usually by video conference or a physical hearing in London or Newport. For more complex cases (such as cases with cross-examination), it is common for the parties to be represented by a barrister; otherwise, the parties are usually represented by their solicitor or attorney.

 

Cost awards in a trade mark opposition:

 

  • The general rule is that the winning side is entitled to an award of costs. The UKIPO uses a scale of costs in order to decide how much money to award the winning side. For more detail on the award of costs and the scale of costs awards, click here: https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §5.

. 

As a brief summary, the current scale of costs awards provides:

  • preparation of evidence: £500 – £2000
  • preparing a Witness Statement and considering a statement of the other side: £200 – £650.
  • preparing legal submissions: £300 – £500
  • preparing for and attending an oral hearing: up to £1300 per day of the hearing, capped at £3300.

 

Appealing the decision of the UKIPO Hearing Officer:

 

  • Either side can appeal the decision of the UKIPO hearing officer. You can appeal to the Appointed Person or to the High Court. The Appointed Person is a senior lawyer appointed by the Government and their decision is final and unappealable. Alternatively, you can appeal to the High Court, the judgment of which may itself be appealed to a higher court. For more information on appealing a decision of the UKIPO, click here:https://www.gov.uk/guidance/trade-marks-manual/tribunal-section §7.

 

So, the starting point if you are facing an opposition is to review this information and then decide whether you want to get an expert involved to give you an opinion and act for you or whether you prefer to withdraw your application and try for a different name.