“Price is what you pay, value is what you get”
Registering a trade mark can be vital for your business and yet so many businesses think so little of it that they don’t get proper professional advice. So here are 5 top myths about registering a trade mark.
- I don’t need a full clearance search. Rarely true! Professional searches will identify problems that you don’t. Some advisors will only do like for like type searches. These don’t find a number of problem areas including similar and phonetically similar marks that may stop yours from being registered.
- I can get an inexpensive search done with a report on conflicting marks – why do I need a professional to check this? It is possible to get a search report done with similar and identical marks. However, unless you are experienced you won’t know which ones will cause you problem. You’ll end up with a search report with no advice, which means you’ve wasted your money on a search in the first place.
- I don’t need a clearance search at all – my mark is so unusual. You’d be amazed at what is already registered! If you file a mark and pay your official fees, then find it refused YOU CAN’T GET YOUR OFFICIAL FEES REFUNDED FROM THE REGISTRY! This means if you’ve filed in the EU, you’ve lost about £700 or more depending on the number of classes and you’re back to square one. Some companies offer you some money back but this is of no use as you are back to square one with your brand.
- I can use the IPO website as guidance for selecting the right classes. The IPO have lots of help but these days it is very important to be very precise about the areas in which you trade. Many EU marks are rejected on the basis that the specifications aren’t specific and precise enough. Again if you file in the EU and don’t have properly drafted specifications then your mark can be rejected. At best this means you are given an opportunity to redraft certain aspects of your specification. At worst you lose your £700 filing fee.
- I can’t get a descriptive or laudatory term filed as a trade mark (A laudatory tem is one such as No1 or Best). Whilst descriptive marks such as “office cleaning services” for services cleaning offices are often rejected, a professional can sometimes help you get these registered using a number of different routes. Similarly this type of situation is where an expert can get a result but a standard service cannot.
- Professional fees are expensive and based on hourly rates. Not true. Virtuoso Legal offers fixed and capped fees tailored according to your budget and needs. What we do is provide ADVICE as well as doing the work of filing. This will save you time, money and future problems. It is ALWAYS easier to get things right first time than correct omissions later down the line.
So if you’re registering a trade mark what do you need to know?
A professional will help you through the full process and give you really important business advice. This is what you really need! A trade mark becomes a business asset. It is often the basis for the goodwill in your company and will greatly enhance your business value if you sell it or use it as a bargaining chip. If you are planning a national or international venture then a trade mark is a very important start. Trade marks are geographical in nature and a professional will help you see the longer term and help you plan accordingly. For example, if you wish to license your trade mark or franchise it then get proper legal advice early on – don’t rely on a cheap registration service and regret it 2 years down the line when you can’t do what you want to do.
The same applies to things such as joint ownership of a trade mark, or use of a holding company for tax purposes or even getting the trade mark valued and used as banking collateral.
Here are 10 things Virtuoso Legal will help you with:
- A review of why you need a trade mark and exactly WHAT needs registering – this could be a word mark, a logo, a word mark in a logo, a company name, a colour, a jingle, a smell. Unlike other services we provide objective advice that is in YOUR best interests. We build long term relationships with our clients.
- We will help draft a proper specification and if required include classes that you won’t realise are important for your business.
- We will review your business objects and suggest ways you can make money from your brand. We can also draft things such as trade mark licenses, franchise agreements, marketing agreements, website terms and conditions.
- We offered fixed fees for searching, filing and registering your trade mark. These INCLUDE advice and GUIDANCE.
- We are regulated by the SRA. Unlike a number of trade mark filing services we are both regulated and have full professional indemnity insurance. Other services do not which means if it goes wrong, then you may not get your money refunded or have no way of being recompensed by insurance.
- We can help you if your mark encounters a problem. This can be done by way of helping you obtain a co-existence agreement so that you can trade alongside another similar mark. Should you encounter objections from opposition proceedings or revocation proceedings, unlike other trade mark registration services we can handle ALL the problems.
- If you have global plans for your business then we can undertake things such as worldwide trade mark, company names and domain name searches to help you plan the future. Many trade mark registration services can’t provide such comprehensive advice. Not many people understand this but if you need to go global with your brand you’ll need a specialist as you WILL need a local solicitor to get your trade mark applications registered overseas. In many countries registering your trade mark REQUIRES you to have a solicitor and the local registry won’t consider your application without one.
- If you find someone has used your brand or trade mark we draft letters for you to get them to stop them from infringing your trade mark and passing themselves off as or for you. We can also help you look at things such as legal expenses insurance to help you with legal costs in the case of trade mark infringement.
- We offer a full monitoring service for your marks – globally. We can then inform you of problems around the World and in most overseas markets.
- We can help you overhaul your trade mark portfolio, identify where the gaps are in your portfolio and save you money by using various filing and renewal strategies.
Yes there are cheap and cheerful companies who will simply file your trade mark. But in our view that is not what you need. The right expert will help save you money and make sure the right filing is made for the right product or service. If your brand is important – and it usually IS then invest in getting the best advice. It won’t cost the Earth and it will help your business prosper. “Price is what you pay, value is what you get”
Want to know more? We’re based in Leeds and London but we act for clients all over the world. Feel free to call us on 0113 237 9900 for a free no obligation chat and a quote. Or email us on email@example.com and Lakmal@virtuosolegal.com