Trade marks

What you need to know

Businesses sometimes make the fatal mistake of assuming that registering a company name or a domain name will give their brand the necessary protection.  In reality, in most countries, registration of a company name or a domain name gives little or no protection to a brand.  Correctly registering your brand as a trade mark at the outset avoids expensive legal tussles and the risk of being forced to rebrand later down the line.

Developing a trade mark filing and protection strategy should, therefore, be one of the first thoughts of any business.

Aside from protecting the reputation and goodwill associated with your brand,  ownership of a  trade mark registration make you a more serious contender for investment or joint venture opportunities and can also be used to secure lending from banks.  It also acts as a deterrent to copycats.

How we can help

We work with clients from selection of a trade mark onwards, advising whether a mark is likely to be accepted for registration in the territories of interest.  We search to identify any existing identical or similar marks owned by others, assess the risks posed by any relevant earlier rights identified and recommend changes to minimise those risks.  We see your trade mark applications through to registration, in all countries of interest to you, assisting you to overcome any obstacles encountered on the way.  We also advise on protecting local language versions of your trade mark in countries where infringers are likely to use or register local language versions.

It is not only names and logos that can be protected by trade mark registration.  Trade mark legislation also permits the registration of straplines, shapes, colours and sounds.

When properly used, renewed, policed and protected, a trade mark registration can last forever.   We help police and protect your trade marks by watching for applications by third parties to register identical or confusingly similar marks and opposing these on your behalf.   We can prepare and file complaints with the Company Names Tribunal against opportunistic registrations of company names incorporating marks in which you have a goodwill/reputation.  We can also record your trade mark registrations with the Customs authorities in order to catch consignments of counterfeit goods.  Our team can also guide you through any trade mark disputes, whether in court or before a trade mark office.

We advise clients on enforcing their trade mark rights against third parties using identical or similar brands on competing goods or services.  We also advise on passing-off claims and on co-existence arrangements.
We can review any existing trade mark protection you have and advise whether it needs updating or supplementing.  If you are considering investing in a pre-existing brand, we can carry out due diligence on the brand and identify for you any defects or weaknesses in the trade mark protection being offered for sale that you should be aware of before committing to invest.    We also attend to the formal procedures required to record transfers or licences of trade mark registrations.

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