Trade mark protection in the UK

Discussion in 'Market Research' started by Panoramix IP, May 26, 2020.

  1. Panoramix IP

    Panoramix IP UKBF Regular Full Member

    135 26
    Hello all

    I see a lot of threads on here where business owners have registered their own trade mark. The general view seems to be that it is easy to register a UK trade mark so why bother using a solicitor or trade mark attorney to help. I agree that the mechanics of applying for a trade mark are simple but the act of drafting a trade mark specification is not as simple as it looks. Most individuals who register their own trade mark do not perform an adequate clearance search. Without the results of a clearance search as a starting point it is not possible to properly consider the intended scope of protection.

    So, I am interested to find out what the members on here would consider a reasonable price point for a solicitor or trade mark attorney to charge for registering a UK trade mark? Bear in mind that the official fee is £170 for one class and £50 for each subsequent class.

    Thanks

    Kevin
     
    Posted: May 26, 2020 By: Panoramix IP Member since: May 4, 2015
    #1
  2. The Byre

    The Byre UKBF Legend Full Member

    10,834 4,639
    That's a bit like a proper website or proper legal advice for contracts. Most small businesses do not bother with searches of any sort and then go all oo-er when that cease-and-desist letter arrives.

    With most microbusinesses being lackadaisical about even doing a Google search for similar or same names, pitching a service like that and at a price that makes it worth your while could be difficult if you are targeting budget start-ups.

    Out of curiosity, I looked up a £2m start-up that has been going now for about nine years to discover that they have done nothing to even attempt to register a TM. They have a name that could be registered, but for whatever reason, just have not bothered.
     
    Posted: May 26, 2020 By: The Byre Member since: Aug 13, 2013
    #2
  3. dotcomdude

    dotcomdude UKBF Enthusiast Free Member

    514 105
    I've had a foot in both camps over the last few years.

    Initially started registering UK trademarks through an online 'trademark attorney'. This cost about £500, including the registry fees for one class of goods.

    After seeing the process all the way through on a couple of trademarks I then started doing them myself.

    The two main things you get from using an attorney are:
    • Help with drafting the application
    • Advice/guidance if an objection is received
    More often than not, the advice when an objection was received did not lead to a successful registration, so since then I have just applied for them myself and in the minority where an objection is received I have chosen to abandon them.
     
    Posted: May 27, 2020 By: dotcomdude Member since: Jul 27, 2018
    #3
  4. MY OFFICE IN CHINA

    MY OFFICE IN CHINA UKBF Legend Full Member

    5,637 1,332
    The objection should be looked at closely, as in many cases, the objector may just require you to exclude a few products from the specific Class you have included, which may still satisfy your needs.

    This is generally communicated by a lawyer acting on behalf of the objector and my advice is to discuss their specific concerns to see if an agreement can be reached to satisfy both parties.

    In some Classes, there are so many products, that I imagine a large majority may not affect your specific products.

    I take on board that you should also look at future products, but at least your chosen trademark can cover the products currently related to your business, rather than start again with additional costs.
     
    Posted: May 27, 2020 By: MY OFFICE IN CHINA Member since: Nov 16, 2011
    #4
  5. Panoramix IP

    Panoramix IP UKBF Regular Full Member

    135 26
    Thank you all for your replies so far. As an IP lawyer myself I am obviously biased and would recommend that trade marks are applied for through a suitable professional. However, I do understand why people would just go ahead and go through the process themselves.

    It generally takes me around 20-30 minutes to draft a trade mark specification and file the application online. So, assuming a nominal hourly rate of £250 p/h I am thinking of charging £125 plus official fees for filing in one class and then an additional £50 plus official fees for filing in each subsequent class. So that would work out at £295 plus VAT for filing in one class, £395 plus VAT for two classes, £495 plus VAT for filing in three classes, etc....

    While that might not sound much for a lawyer to charge it can still be profitable with searching, subsequent foreign filings, opposition's, watching and enforcement. I am hoping that pitching at that cost level is going to be low enough to encourage potential clients to use my services both for filing and subsequent activities, which would also be charged for at a reasonable rate.

    I also plan to file US trade marks directly from here in the UK for a fixed fee of £400 plus VAT per class. UK based companies are obliged to use a registered US attorney (I am admitted in California) so usually they would pay fees to a UK law firm introducer and a US law firm. It can often cost £1,000 per class, or more. Hopefully this will be attractive?

    At the end of the day, the work I do isn't about charging maximum fees to clients. For me, it is about building long term relationships and working with individuals on many different matters over the years.
     
    Posted: May 27, 2020 By: Panoramix IP Member since: May 4, 2015
    #5
  6. The Byre

    The Byre UKBF Legend Full Member

    10,834 4,639
    I think that is a pretty sweet deal - how are you going to market this service?

    I ask because the average start-up beasts into their business plan with little or no preparation and just getting them to read a few books on how to start and run a business is difficult!
     
    Posted: May 28, 2020 By: The Byre Member since: Aug 13, 2013
    #6
  7. Panoramix IP

    Panoramix IP UKBF Regular Full Member

    135 26
    That’s the million dollar question - I think initially it will be through my intermediary contacts, I.e., non-IP lawyers, accountants, innovation advisers and financial advisers. Over time it would be good to develop some form of e-commerce platform to automate the process somewhat.

    I see the same issues. A number of my clients were late to the party with their IP and engaged me to make the most of a bad situation.

    I’m glad you think the proposed price point is reasonable.

    Thanks

    Kevin
     
    Posted: May 28, 2020 By: Panoramix IP Member since: May 4, 2015
    #7
  8. fisicx

    fisicx It's Major Clanger! Staff Member

    34,005 10,101
    I'd rather see a sliding scale. something like:
    1. Check the viability of the proposal - £3
    2. Draft the specification and apply - £6.50
    3. Manage objections- £23
    4. Completion. - £9.99

    I don't want to pay you £295+VAT for you to turn round and tell me it's not going to work.

    And I don't want to discover it's going to cost me another zillion pounds to fix an objection.

    Or is the £295+VAT an all in package? If I pay you this you guarantee I will get my trademark?
     
    Posted: May 28, 2020 By: fisicx Member since: Sep 12, 2006
    #8
  9. Panoramix IP

    Panoramix IP UKBF Regular Full Member

    135 26
    Well £170 of that is the government fee so you would be paying that anyway. If you don't want to pay me £125 + VAT for assistance in filing a trade mark then I would say good luck to you and send you on your way. Knowing the fees that most law firms charge and the pitfalls commonly encountered by the unwary I feel strongly that it is a very fair price.

    Would you be expecting me to stump up the £170 official fee or reimburse you if the trade mark application is not successful? Why should I take that risk? It is your trade mark application after all. Are you willing to pay a reasonable fee for a trade mark search and analysis before filing an application? If you are then I would happily stand behind my advice. I certainly would not be doing that for £3 :) If you just want to file an application without doing any due diligence then no, I will not guarantee that you will get your trade mark for the initial filing fee.

    The point of this venture is to provide fair and reasonable fees to those companies and individuals that need and want it. I am always happy to help those who have messed up their trade marks but I would prefer to help people do a proper job in the first place.
     
    Posted: May 28, 2020 By: Panoramix IP Member since: May 4, 2015
    #9
  10. fisicx

    fisicx It's Major Clanger! Staff Member

    34,005 10,101
    OK that makes sense.

    So how about I pay you the £125 to to the initial work and if you think the trademark application is viable I then pay you the £170.

    Or I pay you £295 and if it's not going to work I get the £170 back

    The that would worry me is paying you and then discovering my application will be rejected.

    People like me need reassurance that there aren't going to be more bills as the process progresses. Maybe that's what the website needs to make clear (if you do decide to do this).
     
    Posted: May 28, 2020 By: fisicx Member since: Sep 12, 2006
    #10
  11. Panoramix IP

    Panoramix IP UKBF Regular Full Member

    135 26
    I'm afraid that is all part of the "game". The £125 fee would be for preparing and filing the trade mark application. If you want a degree of certainty then you would need to pay for a search and analysis beforehand. I (in fact no legal professional) would provide you with a guarantee of success. There is simply no way of knowing how the trade mark examiner will view the application. As a legal professional all I can do is give you the benefit of my experience to give you the best possible chance of success. I am however willing to stand by any opinion that I provide if the client is willing to commit to and pay for a search and analysis as part of developing a trade mark strategy.

    The alternative is you pay the £170 to the UK Intellectual Property Office yourself and hope for the best.

    There may well be more bills as the application progresses. It isn't possible to be completely prescriptive on cost as it would depend on complexity. However, the cost would not be significant and I would discuss the options with clients at the right time.

    The price point I am offering should be low enough for potential clients to think twice about attempting the trade mark registration themselves. If they are not comfortable with a small additional cost then as I said they can go on their way with my best wishes.
     
    Posted: May 28, 2020 By: Panoramix IP Member since: May 4, 2015
    #11
  12. Ray272

    Ray272 UKBF Regular Free Member

    352 52
    The process does not seem difficult for some products.

    You can search the databases for any conflicts before hand. You can search Google for any such conflict. You can search wider TM territories for any possible overlap but if you are free and clear in your chosen territory then you can hopefully proceed.

    You can then use that TM for brand registry purposes in EU Amzn and piggyback it into the largest Amazon on earth and be fully protected in that channel without a hint of a US TM.
     
    Posted: Jun 13, 2020 By: Ray272 Member since: Jul 5, 2017
    #12
  13. Panoramix IP

    Panoramix IP UKBF Regular Full Member

    135 26
    "Searching the databases" is probably ok if you only ever want a UK trade mark. If you want to use your brand in other countries that is not enough. Searching for trade marks in most countries is not straight forward. It requires more than just searching the word that you might use. The process is indeed simple in the UK and Europe in terms of filing an application. However, it is not simple to get the balance of goods and services right. The recent Sky v Skykick UK court decision could have a wide reaching impact on how trade marks should be filed and their enforceability and validity. The strategy needs to be right at the outset if you want to extend the trade mark into other countries.

    While being able to use a trade mark for the purposes of brand protection on Amazon is indeed one benefit of a registered trade mark, that is just one reason to have a trade mark in the first place. If your trade mark is cancelled then the protection you refer to falls away. Amazon is also not the only sales channel for many businesses.
     
    Posted: Jun 14, 2020 By: Panoramix IP Member since: May 4, 2015
    #13
  14. Mr D

    Mr D UKBF Legend Free Member

    27,302 3,348
    Until such time as problems are found.

    Multiple times have seen someone get a UK TM but not a us one. And have it come back to bite them later.
     
    Posted: Jun 15, 2020 By: Mr D Member since: Feb 12, 2017
    #14
  15. Chris Ashdown

    Chris Ashdown UKBF Legend Free Member

    12,091 2,522
    @fisicx will you do me a website and guarantee me success or no fee
     
    Posted: Jun 15, 2020 By: Chris Ashdown Member since: Dec 7, 2003
    #15
  16. fisicx

    fisicx It's Major Clanger! Staff Member

    34,005 10,101
    I was just a bit confused about how the systems worked. It felt like I would give them my money and it might or might not succeed. Which is why I though some sort of staged payments might be preferable. But as @Kevin Hanson explained, it don’t work like that.
     
    Posted: Jun 15, 2020 By: fisicx Member since: Sep 12, 2006
    #16
  17. The Byre

    The Byre UKBF Legend Full Member

    10,834 4,639
    My take on Kevin's planned service is - if you are a sensible person and you have picked a unique name and you are totally certain that nobody is using that name formally or informally anywhere on Planet Earth AND you only want to trade in and/or from the UK, just pay your £170 to the IPO and grab that name.

    If on the other hand, you are not 100% sure of the ground you are walking on - maybe the name is being used unregistered by a similar company or it is widely used by Big Co in the US or Germany or wherever AND you really need that name and can use no other, or perhaps there's some other complication such as common use or name of a town - well, having an experienced IP lawyer to hold your hand for what strikes me as being a very reasonable fee seems to be a no-brainer!

    But the problem remains of getting the message out there to wannabe businesses who seldom if ever register their names.
     
    Posted: Jun 15, 2020 By: The Byre Member since: Aug 13, 2013
    #17