For those of you with an IP background, you can do worse than to check an American blog which is called "The Trademark Blog"
It is maintained by the Schwimmer Mitchell Law Firm, a micro-boutique practicing trademark, copyright and domain name law in Westchester, New York.
What is a trademark?
A trademark can be any sign which distinguishes the goods or services of one undertaking from those of others. It can be a word or a picture. It can be a shape of a container.
Why should I register a trademark?
First, registration grants a statutory monopoly to use of the mark. You can use the registration to prevent others from using the same or similar mark on the same or similar goods or services.
In addition, the first person to register a trademark in good faith can use it to stop someone who started to use the same or similar name earlier but who didn't register it.
What should I do once I have decided what should be my trademark?
Once the new trade mark has been chosen, you should get a qualified professional to conduct clearance searches to see if the trade mark is free for use. The cost of such searches depends upon the amount of time taken to conduct the search and to analyse the results. Much depends upon the nature of the goods or services to be covered and the resultant complexity of the search report.
How much does a search cost?
It is not possible to give a firm quotation but as a general guideline the cost of conducting a register search against a word mark in the United Kingdom will range from £150 for a very simple search to around £250 for a more complex search. These costs include disbursements incurred in search fees and our services for analysing and advising on the resultant report. If the trademark is a logo it will be sensible to search against that logo also which may further increase costs.
How much does it cost to register a trademark?
Our fees will cost £400 plus Vat for a basic application covering only the United Kingdom. To register a trademark as a European Union trademark is likely to cost at least £2500 plus Vat including all official fees, but that is good value when you consider it covers all 15 countries of the European Union by means of a single registration.
How long will it take to obtain a trademark?
The procedure associated with obtaining a UK trademark registration will take approximately 6 months to complete. As soon as the receipt has been issued we will then arrange for the application to be examined and then arrange for the application to be advertised in 'The Trade Marks Journal'. The application must be published to allow any third party to oppose the application. If an opposition is filed against the application then you will have to instruct a lawyet to defend the application. The application must be advertised for three months. If no formal opposition proceedings are filed against the application then the trade mark will become registered.
My views about the desirability of registering a trademark are clear. A registered trademark puts you in a much stronger position to protect your company name than someone who has not taken this step.
Nevertheless it is possible to acquire rights to a name whether you possess the trademark or not.
These rights are known as common law rights instead of statutory rights which are given by the Trademarks Act 1994.
How do you acquire these common law rights? Such factors which help are prior use, advertising and publicity of the name.
An interesting example of a firm seeking to rely on unregistered rights are the Norwegian software vendor, Gallagher & Robertson who have asserted that they have the rights to the Gmail trademark which has the subject of a dispute involving Google and the London based firm, Independent International Investment Research.
A link to an article appears here.
A european trademark covers all fifteen member states of the European Union. The main appeal of an EU application is that the costs of the application compares much better than with the cost of seeking protection in each individual member state of the European Union.
European trademarks are the most comprehensive protection you can obtain for your business name, brand name, company logo or slogans- the protection is effective throughout the whole of the European Union.
Once the european trademark registration has been granted it will last for 10 years and is renewable in 10 year periods - Thereafter, the registration can therefore last indefinitely as long as the registration is renewed at the appropriate time.
The procedure for obtaining a european trade mark registration is exactly the same as the UK but it will take approximately 12 -18 months to obtain the registration.
An additional advantage of a european trade mark is that the application can cover up to three classes without incurring any additional fees.
Trade Marks are assuming increasingly importance within the New Economy yet it is often not understood how they can be established.
In legal terms, a trade mark can be any sign capable of graphic representation that can distinguish the goods or services of one party from another.
Three positive steps must be met for the mark to be registrable:
• It must be a sign
• It must be capable of graphic registration so that it may be entered on the register
• It must be capable of distinguishing the goods of services from those of other undertakings
The real kudos for the propriertor of the mark is that his or her company has exclusive rights to the mark.
If infringement takes place,this is a far stronger weapon than relying on a claim for passing off which is far more difficult to prove.
But perhaps the biggest lesson which a business can learn about registering your trademark is to get in on time.
Just consider this link and how Google has been spun into difficulties over its failure to register the Gmail trademark.