Trademark

[aquarium plant food UK]

I have a small site, selling aquariumplant food, I was thinking should we Trademark our Logo and name etc, can we? even with a ecommerce site.

How would you go about it? I have looked at the Government site on trademarks and it's a bit of a minefield by the looks of it. Should we get a company that specialises in trademarking to do it for us? Is it very expensive/worth it?

Cheers,
John.

 

[Drpepper]

Very easy to do, you need to supply you trade mark/name to the UK Intellectual Property Office - www.ipo.gov.uk - will have the forms etc to download. From memory it takes about 6 months to process. Cost wise, the last one I did was in 2007 and I think it cost around £200.

Once you have a trademark beware of scammers asking for £100's to retain the trademark, this isn't the required as it's yours for life.

 

[Naughty Vend]

It's like insurance, you never need it until something bad happens but if you are a small business and have the fees to spare I would suggest you register the trademark. Get your Vienna classes right...

 

[Drpepper]

Yes I agree with the above, I know one person who didn't register their trademark, someone else did and then held them to ransom (asked £10,000's). In the end they had to rename and re-brand the whole business.

 

[Giggleberries]

Having been through the process myself I would advise that you use a 'Trademark Attorney' as it will save you a lot of headaches.

You need to budget about £1500 to £2000 providing it all goes through smoothly and no body opposes it.

Hope this helps

 

[David Warrilow]

Having been through the process myself I would advise that you use a 'Trademark Attorney' as it will save you a lot of headaches.

You need to budget about £1500 to £2000 providing it all goes through smoothly and no body opposes it.

Hope this helps

That's very expensive.

We're patent & trademark attorneys. It costs £445+VAT through us if there are no probelms (for a one-class application).

 

[dal]

Did you register it just in the uk? I think I read somewhere that uk covers all europe though not positive on this.
I am being contacted by a domain registration firm in China. They are trying to register my companies name as a trademark in china. Which I'm a little concerned about, as they have applied for it before myself, and if they go for a worldwide trademark they could make me transfer my 'preciseformwork.com' domain to them.
What should I do? Just go for a uk patent and will that protect my 'preciseformwork.com' domain?

 

[David Warrilow]

Did you register it just in the uk? I think I read somewhere that uk covers all europe though not positive on this.
I am being contacted by a domain registration firm in China. They are trying to register my companies name as a trademark in china. Which I'm a little concerned about, as they have applied for it before myself, and if they go for a worldwide trademark they could make me transfer my 'preciseformwork.com' domain to them.
What should I do? Just go for a uk patent and will that protect my 'preciseformwork.com' domain?

A UK trademark covers just the UK, a 'Community' trademark covers the whole EU including the UK.

Regarding the Chinese company contacting you there are a lot of these companies trying to scam people by telling them that another company is trying to register a number of very similar domain names and requesting payment of a sum of money to prevent this.

I have not heard, however, of a firm claiming they are trying to register someone's company name as a trademark in China. Are you sure this is the case?

A UK trademark registration could protect your name in the UK, but given that you supply formwork you may well get an objection that the name is descriptive. This type of objection might prevent any other company (including the Chinese company) registering PRECISE FORMWORK in the UK.

If you have been trading for some time you might be able to overcome any such objection by demonstrating distinctiveness acquired through use.

You may stand more chance of registering your stylised version of Precise Formwork (although of course the scope of protection would be narrower).

 

[lww]

You don't have to register a trademark - you can simply mark your name and logo as trademark by using the "TM" suffix where it is used. Balance the benefit against the cost.

I disagree that someone can simply register your trademark and make you pay to obtain their registration or else force you to re-brand. Perhaps David Warrilow is best placed to advise on this or other risks (if any) of relying on a normal trademark rather than a registered trademark, however in my opinion passing off laws and company registration are enough to protect you in virtually all cases. Then again, if you've got a couple of thousand spare to protect yourself absolutely in various countries then why not!

 

[Drpepper]

I disagree that someone can simply register your trademark and make you pay to obtain their registration or else force you to re-brand.

Dangerous nonsense to be posting.

If your trademark is part of your brand image then absolutely get it registered for the £200 odd pounds - it really is very simple to do. If you don't it can be hijacked, registered and held to ransom - I have seen it happen.

Also at least do a simple trademark check - you never know you may have unwittingly copied an already registered trademark.

 

[lww]

Dangerous nonsense to be posting.

Nothing dangerous about it at all. Look around you at a multitude of businesses that don't have registered trademarks.

If your trademark is part of your brand image then absolutely get it registered for the £200 odd pounds - it really is very simple to do. If you don't it can be hijacked, registered and held to ransom - I have seen it happen.

Also at least do a simple trademark check - you never know you may have unwittingly copied an already registered trademark.

So which one is it, always get yourself registered, or do a simple trademark check?

 

[Drpepper]

Nothing dangerous about it at all. Look around you at a multitude of businesses that don't have registered trademarks.

So which one is it, always get yourself registered, or do a simple trademark check?

How would you know how many people have their trademark registered - you don't. Your advice not to could cost dearly.

I suggested at least doing a search as if your trademark/name is already registered you could be forced to change it. Just imagine opening shop number 20 - all nicely branded and fitted only to have to go to the expenses of changing all your branding, let alone the losses you would sustain through loss of identity. Why would you take this risk for the sake of £200 :| Even just one shop/business and it would cost you £000's and you would have someone else using your identity.

Also just putting TM next to you logo means nothing, zero, zilch.

 

[lww]

I suggested at least doing a search as if your trademark/name is already registered you could be forced to change it. Just imagine opening shop number 20 - all nicely branded and fitted only to have to go to the expenses of changing all your branding, let alone the losses you would sustain through loss of identity. Why would you take this risk for the sake of £200 :| Even just one shop/business and it would cost you £000's and you would have someone else using your identity.

But why are you recommending doing that when you recommend registering your own trademark? Suggesting someone could force you out of using your own name is only applicable if they register the trademark *before* you start using it - there have even been high profile cases in the news about this, was it "meal deal" or something?

Also just putting TM next to you logo means nothing, zero, zilch.

It indicates that you view it as your trade mark, something you acquire in common law from point of first use. In terms of trademark law, no it doesn't mean anything, but in practical terms it's still useful and serves as an intention to register your trademark. To give an example, suppose I have registered a UK company called Useless Ltd, websites called useless.co.uk and useless.com, and have "TM" marked my Useless logo and name - are you saying you think somebody can then successfully apply for a registered trademark for "Useless", serve a cease and desist notice against me and stop my company trading under that name?

 

[Drpepper]

Ok, you misunderstand.

I would always trademark my name/logo

If someone wasn't going to trademark their name/logo they should at least check that no one else already has it trademarked.

Your "useless" example (read above if you haven't already - this isn't an insult ), yes if "useless" was a registered trademark then you couldn't use it in the same business area, regardless if you set up the company before someone else registered it or not.

I think you'll find that "meal deal" can't be trademarked, in the same way you can't trademark "plumber" or "accountant". A trade mark can't be a descriptive.

 

[lww]

Your "useless" example (read above if you haven't already - this isn't an insult ), yes if "useless" was a registered trademark then you couldn't use it in the same business area, regardless if you set up the company before someone else registered it or not.

That wasn't my question. I think we're all smart enough to know that you can't start a company with someone else's registered trademark. The question was whether you really think someone could manage to register that trademark and force your company to stop using that mark when you have the LtdCo name, website names and have marked your usage with "TM" *beofre* they register the mark.

I think you'll find that "meal deal" can't be trademarked, in the same way you can't trademark "plumber" or "accountant". A trade mark can't be a descriptive.

Again you are missing the point with apparently consumate ease - the point I made quite clearly was not whether or not that particular phrase was a valid trademark, it was that some mega-corporation had a trademark battle with some tiny tinpot London trader over a registered trademark that the London company had used for decades. I'm sure it was a US food chain, can't remember the trademark but that's irrelevant, it was to demonstrate my point that the London company used it first and couldn't be stopped from continuing to use it by a subsequent trademark registration.

 

[Drpepper]

That wasn't my question. I think we're all smart enough to know that you can't start a company with someone else's registered trademark. The question was whether you really think someone could manage to register that trademark and force your company to stop using that mark when you have the LtdCo name, website names and have marked your usage with "TM" *beofre* they register the mark.

Again you are missing the point with apparently consumate ease - the point I made quite clearly was not whether or not that particular phrase was a valid trademark, it was that some mega-corporation had a trademark battle with some tiny tinpot London trader over a registered trademark that the London company had used for decades. I'm sure it was a US food chain, can't remember the trademark but that's irrelevant, it was to demonstrate my point that the London company used it first and couldn't be stopped from continuing to use it by a subsequent trademark registration.

Last time, and anyone who has ever applied for a trademark will know this

I thought I was clear, if a trademark isn't registered then anyone can register it and user it regardless of how long someone may have been trading with the same mark. If a company fails to register it's trademark then more fool them.

Perhaps the two statement below from the IPO will clear this up:-

Does my ownership of the domain name, which dates back many years, secure my ownership of the name as my brand?
Ownership of a Domain Name, or registration of a Company Name, does not provide any registered trade mark protection regardless of how many years you have owned the domain name.

In law they are all completely separate. For registered trade mark protection your brand must be registered as a trade mark.

Trade marks are not registrable if they:

describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;
have become customary in your line of trade;
are not distinctive;
are three dimensional shapes, if the shape is typical of the goods you are interested in (or part of them), has a function or adds value to the goods;
are specially protected emblems;
are offensive;
are against the law, for example, promoting illegal drugs; or;
are deceptive. There should be nothing in the mark which would lead the public to think that your goods and services have a quality which they do not.

Hope that clears this up. Don't you just love copy & paste!!

 

[David Warrilow]

That wasn't my question. I think we're all smart enough to know that you can't start a company with someone else's registered trademark. The question was whether you really think someone could manage to register that trademark and force your company to stop using that mark when you have the LtdCo name, website names and have marked your usage with "TM" *beofre* they register the mark.

Yes they can stop you unless you can demonstrate a reputation in the name gained through use. Registering company names, domain names and using the 'TM' symbol doesn't give you any rights to continue using the name, only registering a trademark does. or gaining a reputation in the UK through use of the name. The latter can be difficult to prove.

Registering trademarks when possible is vitally important.

 

[Drpepper]

Just for good measure, this from the IPO as well:-

What if businesses fail to register their trade marks?
If traders decide not to register their trade mark, they place the mark and consequently their business in a very vulnerable position. They will then need to rely on common law (passing off) to protect their rights. Providing evidence of this for a court of law will take up a substantial amount of time. With possible appeals the whole process could take years with the eventual outcome always in doubt.

Unless a business decides to register their trade mark, third parties are legally entitled to register the same mark and could then offer to license or sell it back to the business for a fee. If the business simply carries on trading, it could be sued for infringing a registered right.

There have been many cases where third parties, partners, family members etc have registered trade marks in such circumstances.

 

[lww]

Yes they can stop you unless you can demonstrate a reputation in the name gained through use. Registering company names, domain names and using the 'TM' symbol doesn't give you any rights to continue using the name, only registering a trademark does. or gaining a reputation in the UK through use of the name. The latter can be difficult to prove.

So are you saying that a trading UK LtdCo with online presence and branded products is going to struggle to prove they have a reputation in the event that someone else later maliciously registers the name as a trademark and you don't know about it and fail to object to it? I don't think so, which is why my original point was that you don't *necessarily* need to register a trademark as it depends on what you do, your trading environment, etc and a fair dose of realism and pragmatism.

Registering trademarks when possible is vitally important.

With all due respect, I wouldn't expect a trademark attorney to suggest otherwise, it would be like turkeys voting for Xmas. What people need to appreciate is that you are for example quoting over £500 inc VAT for a single mark in a single location (?). If you have more than one mark and trade in multiple countries, you are talking thousands... that is not necessarily a sensible use of money for companies, especially startups. For established companies or those with large startup funding, yes it probably makes sense as they can afford it, but for others I maintain using "TM" to indicate your intent is a sensible alternative.

I have no issue with people who come to a balanced conclusion to register their trademarks, but when I see "Tony's Tyre Services of Swindon (R)" I see someone who has been conned into wasting their money (and who probably buys dishwasher insurance from Comet too).


DrPepper, no idea why you are quoting chapter and verse about domain names, guess you see some relevance there!

 

[Drpepper]

DrPepper, no idea why you are quoting chapter and verse about domain names, guess you see some relevance there!

This is why:-
To give an example, suppose I have registered a UK company called Useless Ltd, websites called useless.co.uk and useless.com, and have "TM" marked my Useless logo and name - are you saying you think somebody can then successfully apply for a registered trademark for "Useless", serve a cease and desist notice against me and stop my company trading under that name?

Good God man, just accept when you are wrong, there's nothing wrong with learning a little every now and then. The quotes from the IPO that I gave are only there as you seem unable to accept what I was saying, so I backed it up with evidence.

Get over the "TM", this means nothing at all unless it's registered. You can't just put it next to your logo and claim it's trademarked - good grief.

 

[Drpepper]

I have no issue with people who come to a balanced conclusion to register their trademarks, but when I see "Tony's Tyre Services of Swindon (R)" I see someone who has been conned into wasting their money

No offence, but your showing your ignorance on the subject again sir, if you knew anything about trademarks (or actually read the previous posts) you would know that this example couldn't be trademarked.

 

[David Warrilow]

So are you saying that a trading UK LtdCo with online presence and branded products is going to struggle to prove they have a reputation in the event that someone else later maliciously registers the name as a trademark and you don't know about it and fail to object to it? I don't think so, which is why my original point was that you don't *necessarily* need to register a trademark as it depends on what you do, your trading environment, etc and a fair dose of realism and pragmatism.


With all due respect, I wouldn't expect a trademark attorney to suggest otherwise, it would be like turkeys voting for Xmas. What people need to appreciate is that you are for example quoting over £500 inc VAT for a single mark in a single location (?). If you have more than one mark and trade in multiple countries, you are talking thousands... that is not necessarily a sensible use of money for companies, especially startups. For established companies or those with large startup funding, yes it probably makes sense as they can afford it, but for others I maintain using "TM" to indicate your intent is a sensible alternative.

You don't seem to understand this. We regularly see people who did not register their name as a trademark and find themselves in trouble later on when it turns out that they are infringing someone else's trademark (either registered before or after they started trading).

For example this week I was contacted by someone who has spent about £5k on branding their business only to receive a nasty letter. They are going to have to rebrand.

That was a small company, which can little afford to spend thousands rebranding.

This could have been avoided if they had sorted out the trademark for their company name at the outset.

You suggest relying on use of 'TM'. Can you not understand that this has absolutely no legal weight whatsoever. I can put TM next to whatever I like. It doesn't mean that I have more right to it than if I hadn't.

You say that you 'wouldn't expect a trademark attorney to suggest otherwise'. I agree, but mainly because we routinely see people who are in serious difficulty because they didn't register their main trademarks.

You say it's not necessarily a sensible use of money for start-ups. If anything it is more important for start-ups as the cost of rebranding for them can be much more difficult to meet.

Further, the cost of demonstrating a reputaton in the UK is a lot higher than registering a trademark. Thus not registering a trademark and intending to rely on reputation is a very short-sighted view. You may need to spend thousands of pounds in a few years time trying to gather evidence of reputation. This could be easily avoided by spending a few hundred on registration.

With all due respect, you're wrong.

 

[lww]

No offence, but your showing your ignorance on the subject again sir, if you knew anything about trademarks (or actually read the previous posts) you would know that this example couldn't be trademarked.

I do apologise for typing a quick example that you think doesn't comply - let's suppose that example was "Swindon IP" instead. Not that the name was the issue (again) but if it keeps you happy!

 

[Drpepper]

I do apologise for typing a quick example that you think doesn't comply - let's suppose that example was "Swindon IP" instead. Not that the name was the issue (again) but if it keeps you happy!

Sorry mate, given up. Have a good look at the IPO website then come back when you understand a bit more about trademarks and what can and can't be trademarked etc. No offence intended.

 

[lww]

That was a small company, which can little afford to spend thousands rebranding.

But if they had multiple marks in multiple countries it would have cost them thousands to register in the first place. Startups need capital and cashflow at startup, just on a simple cashflow basis you'd rather pay thousands after a few years when you're a successful business than upfront when you're scraping along and are likely to fail (statistically) within the first year anyway.

Further, the cost of demonstrating a reputaton in the UK is a lot higher than registering a trademark. Thus not registering a trademark and intending to rely on reputation is a very short-sighted view. You may need to spend thousands of pounds in a few years time trying to gather evidence of reputation. This could be easily avoided by spending a few hundred on registration.

...if you just have one mark in one country.

With all due respect, you're wrong.

OK, well we're going round in circles so let's agree to differ and I shall revert to my friend who is a patent attorney (not the same as a trademark attorney I know) and next time I see him I'll ask him what he thinks.

 

[lww]

Sorry mate, given up. Have a good look at the IPO website then come back when you understand a bit more about trademarks and what can and can't be trademarked etc. No offence intended.

So you're saying "Swindon IP" can't be trademarked...?

 

[Drpepper]

So you're saying "Swindon IP" can't be trademarked...?

I know I said I had given up, but it's a quiet day today so...

This was posted earlier, guess you missed it:-

Trade marks are not registrable if they:

describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;

 

[florenceij]

Interesting post. I think it's great to trademark your brand and see why in this article titled Dirty tricks by Competitors. A True story on how it can go wrong.

 

[lww]

I know I said I had given up, but it's a quiet day today so...

This was posted earlier, guess you missed it:-

Trade marks are not registrable if they:

describe your goods or services or any characteristics of them, for example, marks which show the quality, quantity, purpose, value or geographical origin of your goods or services;

That's going to be a shock for David's "London IP" trademark then - or am I still misunderstanding everything? How did Kentucky Fried Chicken get their text trademarks registered?

Of course none of this was relevant to the original point as you know, but as we're off on a tangent now it would be nice to understand this.

 

[Drpepper]

Actually I'm wrong, just done a search and London is used in a number of trademarks.

You couldn't use the "tyre service" or such though.

 

[lww]

Actually I'm wrong, just done a search and London is used in a number of trademarks.

Gosh, so I wasn't wrong on that after all...

You couldn't use the "tyre service" or such though.

What, like "Eurofleet Tyres & Services" or "Volkswagen Tyre Service System"?

 

[Drpepper]

Apparently so, doesn't tie up with their printed "rules" though does it. Luckily my trademark isn't descriptive (just company name & logo), guess this is where you would need a trademark lawyer.

Wonder why they have all bothered though when they could just have put a "TM" next to their name for free

 

[David Warrilow]

But if they had multiple marks in multiple countries it would have cost them thousands to register in the first place. Startups need capital and cashflow at startup, just on a simple cashflow basis you'd rather pay thousands after a few years when you're a successful business than upfront when you're scraping along and are likely to fail (statistically) within the first year anyway.


...if you just have one mark in one country.

A startup generally doesn't have multiple marks in several countries. I've never seen one that does.

Charity starts at home.....

Register your company name and/or any significant brand name in your own country. Work from there. You can always trade the same product in other countries under different names. The important thing is getting going and being secure in that.

 

[ComJan]

You can get a trademark but enforcement is another matter... your business plan should not involve enforcing a trademark unless you have a very specific reason

 

[David Warrilow]

You can get a trademark but enforcement is another matter... your business plan should not involve enforcing a trademark unless you have a very specific reason

It should, however, involve registering a trademark (if possible) so someone can't force you to change your name/brand in the future.

 

[Drpepper]

It should, however, involve registering a trademark (if possible) so someone can't force you to change your name/brand in the future.

That's the whole point and the answer to the OP's question I think.