How to Register a UK Trademark on a Shoestring

David Warrilow

Free Member
Apr 16, 2009
284
76
London
Hi All,

I'm a patent and trademark attorney at London IP, and I've noticed that there are a lot of people on this forum that need help with trademarks but either can't afford the services of a trademark attorney or would rather do things themsleves, so I thought the forum users might be interested in our new article 'How to register a UK trademark on a shoestring', which can be found here:

How to Register a UK Trademark on a Shoestring

We'll be posting a series of articles aimed at helping people protect their IP, and if there are any specific topics anyone would like us to cover please let me know.

Thanks

David
 

TheWebDesigner

Free Member
Mar 28, 2010
22
3
Glasgow
Thanks for this very helpful.

I have a simple query

If there is mutiple companies using the saame sort of name

say

Jimmy's Super Solutions Ltd
Jimmy's Super Ltd
Jimmy's Super average Ltd

All are different businesses

And no one has trademarked


Jimmy's Super

Can I register the trademark Jimmy's Super is none of the others have already.

Thanks

Al
 
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David Warrilow

Free Member
Apr 16, 2009
284
76
London
Hi Al

You may be able to register 'Jimmy's Super'. Whether or not the registration will be valid may depend upon whether or not any of the other companies you have mentioned have accrued 'passing off' rights in the name Jimmy's Super in relation to the goods/services of interest to you. If they have then they might be able to successfully oppose/invalidate any registration you obtain of Jimmy's Super.

If the other companies you are aware of are in completely unrelated fields to the one of interest to you then it may be difficult for them to establish passing off.

If you require specific advice please do not hesitate to pm me.

David
 
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K-rado

Free Member
May 4, 2011
413
82
Buckinghamshire
Hi All,

I'm a patent and trademark attorney at London IP, and I've noticed that there are a lot of people on this forum that need help with trademarks but either can't afford the services of a trademark attorney or would rather do things themsleves, so I thought the forum users might be interested in our new article 'How to register a UK trademark on a shoestring', which can be found here:

How to Register a UK Trademark on a Shoestring

We'll be posting a series of articles aimed at helping people protect their IP, and if there are any specific topics anyone would like us to cover please let me know.

Thanks

David


Good stuff David. All credit to you for this.

How about a How-to on Patents and reg. design.

Cheers K. :)
 
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Mr Cus

Free Member
Jul 4, 2011
72
6
Hi All,

I'm a patent and trademark attorney at London IP, and I've noticed that there are a lot of people on this forum that need help with trademarks but either can't afford the services of a trademark attorney or would rather do things themsleves, so I thought the forum users might be interested in our new article 'How to register a UK trademark on a shoestring', which can be found here:

How to Register a UK Trademark on a Shoestring

We'll be posting a series of articles aimed at helping people protect their IP, and if there are any specific topics anyone would like us to cover please let me know.

Thanks

David

Hi David,

Thanks for this , it really is hard at the moment to be able to afford legal advice concerning IP rights etc. Would you be able to provide information on protecting design rights? the inventions my partner and I have aren't suitable for patent protection.

Regards
Cus
 
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David Warrilow

Free Member
Apr 16, 2009
284
76
London
Thanks K and Cus

I hope you find our brief guide useful.

As to an article on designs, yes we can do that. Design registration is even more straight-forward than trademarks.

We have considered an article on patents, but really don't think it's a good idea. The reason is that the key to applying for a patent is in writing the application, and that really needs to be done by a patent attorney if the applicant wants to stand a good chance of acquiring protection.

I have seen dozens of DIY patents and only two have been any good. There are huge legal differences arising from the use of closely related words, the classic example in patent applications being 'consisting' and 'comprising'. But that is just the tip of the iceberg. There is a large body of case law and working out what the essential* elements of an invention are is a skill in itself (hence the rigorous exams that patent attorneys have to take).

*If the claims of a patent are drafted such that they include a non-essential element of an invention then patent infringement can in most circumstances be avoided by simply leaving that element out of what would otherwise be an infringing product/process.

In general DIY applications can be worthless, even dangerous. I have seen numerous instances of someone filing a patent application, thinking they are protected, disclosing their invention and then not being able to obtain the patent protection they might have got if the application had been properly written. Just last week I withdrew two DIY applications on behalf of clients, filing professionally written applications in their place. The DIY applications stood no chance of obtaining protection.

Thus, if we were to write an article on applying for patent protection 'on a shoe-string' the advice would have to be 'don't do it'.

Any such article would seem self-serving as we are a firm of patent attorneys, and that's not an image we want to portray.

Designs, however, as mentioned above are suitable subject matter as we can give practical guidance without effectively saying 'pay for our services'.

Incidentally, if you are looking for free IP advice we run 1-2-1 sessions in partnership with the British Library, providing guidance to anyone interested in IP. More details can be found here; you can book a session if you follow the links:

http://www.londonip.com/london_ip_and_the_british_library.html

Also, every firm of patent and trademark attorneys should give free half hour consultations. You could try taking them up on that, perhaps visit a few firms for different perspectives.

I believe that CIPA runs some free IP clinics as well, with patent attorneys donating their time to provide free advice.

I would also recommend discussing any questions you have with UKIPO. For a Government body they are remarkably responsive and helpful.

Personally I enjoy providing some pro-bono advice as it's pretty much the only way I can give back something to society using my professional training (other than assisting client applicants in seeking protection for their technological innovations that can enhance everyone's living standards).

David
 
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I can give you an opinion if you email me, Mr Cus - we give up to half an hour's free advice - but our advice isn't cheap!

Let me mention a true story ...

I was approached by a mobile phone company for help in recovering their domain name which they had discovered had been registered by their ex-website designer in his own name - something else to watch out for by the way.

They had already registered their name - a basic word mark - as their trade mark, they said.

As they were a mobile phone company, they had registered their name as their trade mark for mobile phones in Class 9 of the register, it was quite easy they said.

Quite straightforward and simple ....

.... except that they were a mobile phone retailer, and retailing services are in Class 35, and they had registered for branding their own mobile phones and marketing own-brand phones in Class 9, which they didn't do and had no intention of doing.

So their simple, straightforward trade mark registration in Class 9 was invalid and worthless, and an expensive waste of money.
 
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Mr Cus

Free Member
Jul 4, 2011
72
6
Thanks K and Cus

I hope you find our brief guide useful.

As to an article on designs, yes we can do that. Design registration is even more straight-forward than trademarks.

We have considered an article on patents, but really don't think it's a good idea. The reason is that the key to applying for a patent is in writing the application, and that really needs to be done by a patent attorney if the applicant wants to stand a good chance of acquiring protection.

I have seen dozens of DIY patents and only two have been any good. There are huge legal differences arising from the use of closely related words, the classic example in patent applications being 'consisting' and 'comprising'. But that is just the tip of the iceberg. There is a large body of case law and working out what the essential* elements of an invention are is a skill in itself (hence the rigorous exams that patent attorneys have to take).

*If the claims of a patent are drafted such that they include a non-essential element of an invention then patent infringement can in most circumstances be avoided by simply leaving that element out of what would otherwise be an infringing product/process.

In general DIY applications can be worthless, even dangerous. I have seen numerous instances of someone filing a patent application, thinking they are protected, disclosing their invention and then not being able to obtain the patent protection they might have got if the application had been properly written. Just last week I withdrew two DIY applications on behalf of clients, filing professionally written applications in their place. The DIY applications stood no chance of obtaining protection.

Thus, if we were to write an article on applying for patent protection 'on a shoe-string' the advice would have to be 'don't do it'.

Any such article would seem self-serving as we are a firm of patent attorneys, and that's not an image we want to portray.

Designs, however, as mentioned above are suitable subject matter as we can give practical guidance without effectively saying 'pay for our services'.

Incidentally, if you are looking for free IP advice we run 1-2-1 sessions in partnership with the British Library, providing guidance to anyone interested in IP. More details can be found here; you can book a session if you follow the links:

http://www.londonip.com/london_ip_and_the_british_library.html

Also, every firm of patent and trademark attorneys should give free half hour consultations. You could try taking them up on that, perhaps visit a few firms for different perspectives.

I believe that CIPA runs some free IP clinics as well, with patent attorneys donating their time to provide free advice.

I would also recommend discussing any questions you have with UKIPO. For a Government body they are remarkably responsive and helpful.

Personally I enjoy providing some pro-bono advice as it's pretty much the only way I can give back something to society using my professional training (other than assisting client applicants in seeking protection for their technological innovations that can enhance everyone's living standards).

David

Thanks David,
We had gone down the road of paying for the services of an ip attorney, he suggested that we could apply for patents but advised that we should consider design rights in the countries we wish to trade in...At the time we had funds to do this so we started the patent process so at least we could talk to manufactures etc... we were then going to follow up with design rights. The company drew up a patent application and they submitted it on our behalf, knowing that within a year we would have to decide whether to continue.
Our bank was behind us 100% at the time, but during this year the bank crisis set in and they dried up like a prune, the manager was no longer able to take any risks. Our attorney advised us to shelve it until we could find the funds, which we did.
We have all the designs as they were needed for the patent application, our idea now would be to break down the 14 concepts and get design rights for one at a time, reducing the costs, but as funding is still hard to get from banks we are struggling. We have considered investors, angels etc, but without the design rights in place we are unwilling to take the risk.
Thats why design rights on a shoestring would be ideal for us.
 
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There are several different types of design right, as explained further here, and only non-functional features are protected, but registration is easy and cheap to obtain and there is no examination as to novelty, so obtaining registration can be worthwhile for the deterrent factor alone – even if it might be vulnerable to attack.

Also, protecting any new designs by means of UK or Community (EU) Registered Design is not only relatively simple and cheap but multiple designs can be protected in a single registration, deliberate copying is not needed to infringe – i.e. protection is wider than for unregistered design right, and protection can be obtained for up to a 25 year term.

I can provide a quotation if you email me the relevant information.
 
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IP Consultant

Free Member
Oct 27, 2009
16
6
Birmingham
K and Cus
You might like to have a look at the design registration article I did for the British Library at the link below.
http://www.bl.uk/bipc/news/protectregistereddesign.html
The brief article cannot cover all aspects of registration but draws attention to some of the common pitfalls.
If it is useful please forward it your colleagues.
Best wishes
Matthew
 
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