TRADE MARKS FAQS

Q Why are brands important?

A "In the future, the brand will be the most important asset of the firm."
- French marketing expert Jean Noel Kapferer, 1992

Q Am I OK to launch my new product if I have checked domain name registers and the Companies House Register?

A The simple answer is no. Checking the Companies House Register and domain name registers does not clear your trade mark for use.
It is essential before adopting a mark that searches are undertaken of trade mark registers. Not doing so can have potentially disastrous consequences, as the following story illustrates.

David and Victoria decided to launch a new product. The product was designed, and branding devised. In the branding process, domain name registers were checked and appropriate domain names registered. A logo, packaging, swing tags, product labels, stationery, and web pages were designed, a marketing campaign devised, and adverts placed. Quite a big investment.

Unfortunately, no checks were undertaken of trade marks registers. Registered trade marks are powerful rights. One month after the product launch, a "cease and desist letter" was received, alleging infringement of a registered trade mark. David and Victoria had no choice but to deliver up or destroy all the packaging, swing tags, product labels and stationery bearing the infringing mark, change the web pages, domain name and company name, pay compensation and costs and publish a notice in a trade journal.

This can be devastating, with a loss of credibility in the market place, and is not an uncommon occurrence. How can this be avoided? Simply by ensuring that, before adopting a new trade mark, searches are undertaken of appropriate trade mark registers.

Q Why should I use a trade mark attorney?

A The assessment of distinctive character, and of whether trade marks are similar and whether goods are similar, are matters which are subject to a degree of subjectivity. Over time, extensive case law has developed to regularise this assessment, and this case law is still being developed. Trade mark attorneys use their knowledge and experience of case law to advise clients as to the risks involved in adopting a particular trade mark, and pursuing or defending an opposition, invalidity, revocation or infringement action. A qualified trade mark attorney who is a member of ITMA, The Institute of Trade Mark Attorneys, is obliged to keep up to date with developments in case law, to ensure that advice given is in accordance with current law.

Tim Blower of IP-Active.com has acted for clients in oppositions, invalidity, revocation and infringement matters, is a member of ITMA qualified by examination, a European trade mark attorney authorised to practice before the European Community Trade Marks Office (OHIM) and has frequently led seminars on developments in trade mark case law.