Trademark/Copyright

[Danny92]

Hi guys

I have a question regarding trademarking our brand/logos and product names. We are aiming to sell our products globally(mainly UK,USA,EU and parts of Asia).

The lawyer we used to get our patent has just quoted us for trademarking our logo, brand name and product name for $5000AUD. This is for a single class trademark application covering Canada, US, NZ, EU and China. Does this cost seem about right?

Also I'm guessing the trademarks cant be amended or changes made once the application has gone through?

Any advice regarding this topic would be greatly appreciated.

Thanks!

 

[The Byre]

Assuming that includes registration fees, that does seem an OK price - but why leave the UK out?

You can, of course, DIY it and save most of the money, but perhaps you have better things to do!

 

[studioJK]

Hi @Danny92

While it is not really possible to comment on the costs (since costs vary depending on the specifics of the matters), I would note that it would be beneficial to have a reputable trademark attorney to help you, particularly given the value of a brand and intellectual property related dispute could be very expensive.

 

[MOIC]

You can do it all yourself and save money. It's a simple process.

Who is completing this application? - Apply to register a trade mark - Intellectual Property Office

trademarks.ipo.gov.uk

Consider registering your trademark in one country first where most of your customers will originally come from (UK?), then add individual countries, once it's granted. The UK falls under the Madrid System (Madrid Protocol), as do most countries, so the country you want to register your trademark must allow you to register protection of your trademark.

Alternatively you can apply for an International trademark registration (TEASi).

Remember a few things.

1. Not all countries are part of the Madrid System.

2. You need to keep actively aware of who may be infringing your trademark and be prepared to take action.

3. Registering your trademark allows you to challenge it's use by 3rd parties. This can cost, albeit a lawyer's 'cease & desist' letter first may solve the problem, but not always.

4. Cover all classifications in your first application, that you feel your trademark should be protected. Omitting one classification which is connected to a future product you may be selling, may be false economy.

5. If you're selling online, the products will be viewed by most, if not all countries.

A consultation with your patent attorney should offer advice as to what's best for you.

 

[Hughj11]

Just to add some insight here, in the US a trademark application is really quite expensive compared to the EU let alone the UK. For a single class, it's usually around $2,000 - $2,500 for the US (including both official and professional fees). The EU is €850 for one class in official fees and in Canada, it's CAD$335 (around £210) and so I think the price is actually very good (maybe too good?).

You're correct in thinking that a trademark cannot be amended after it has been registered. You can remove goods & services and even whole classes, but you cannot add any, nor can you make any changes to the trademark itself.

Regarding the WIPO route, it can be very beneficial and easy at the beginning, but it does come with a convenience cost of around £560. It is also worth noting that at some point you may need a local representative in each jurisdiction so whether to file individually or collectively isn't such an easy decision. You can view the official fees (not any attorney fees) for WIPO here: https://madrid.wipo.int/feecalcapp/.

 

[Bob Morgan]

Even with all of the formalities completed, 'Copyright' actually means 'The Right to Copy' in some jurisdictions!

 

[Danny92]

You can do it all yourself and save money. It's a simple process.

Who is completing this application? - Apply to register a trade mark - Intellectual Property Office

trademarks.ipo.gov.uk

Consider registering your trademark in one country first where most of your customers will originally come from (UK?), then add individual countries, once it's granted. The UK falls under the Madrid System (Madrid Protocol), as do most countries, so the country you want to register your trademark must allow you to register protection of your trademark.

Alternatively you can apply for an International trademark registration (TEASi).

Remember a few things.

1. Not all countries are part of the Madrid System.

2. You need to keep actively aware of who may be infringing your trademark and be prepared to take action.

3. Registering your trademark allows you to challenge it's use by 3rd parties. This can cost, albeit a lawyer's 'cease & desist' letter first may solve the problem, but not always.

4. Cover all classifications in your first application, that you feel your trademark should be protected. Omitting one classification which is connected to a future product you may be selling, may be false economy.

5. If you're selling online, the products will be viewed by most, if not all countries.

A consultation with your patent attorney should offer advice as to what's best for you.

Thank you for this, I have opted to doing it myself after seeing this and now its all done

We are also looking at trademarking the brand name/logo in China, in a rush to do this so we can discuss our product in further detail with the Chinese manufacturers(lawyer has advised its wise to trademark in China BEFORE discussing further details even with NNN). Would the next steps be to just go ahead with trademarking the logo/name in China through this lawyer or to wait for our UK one to be granted and add(?) China to this?

Thanks

Just to add some insight here, in the US a trademark application is really quite expensive compared to the EU let alone the UK. For a single class, it's usually around $2,000 - $2,500 for the US (including both official and professional fees). The EU is €850 for one class in official fees and in Canada, it's CAD$335 (around £210) and so I think the price is actually very good (maybe too good?).

You're correct in thinking that a trademark cannot be amended after it has been registered. You can remove goods & services and even whole classes, but you cannot add any, nor can you make any changes to the trademark itself.

Regarding the WIPO route, it can be very beneficial and easy at the beginning, but it does come with a convenience cost of around £560. It is also worth noting that at some point you may need a local representative in each jurisdiction so whether to file individually or collectively isn't such an easy decision. You can view the official fees (not any attorney fees) for WIPO here: https://madrid.wipo.int/feecalcapp/.

Thanks for this insight. $2000-$2500USD seems like an outrageous amount. Good to know we aren't getting ripped off here in the UK

Even with all of the formalities completed, 'Copyright' actually means 'The Right to Copy' in some jurisdictions!

Yeah I think its more to just reduce some anxiety personally lol