Register a trademark to protect your IP

Congratulations on deciding to start a new business. We did that in 2012, and still remember it vividly. There's a lot to do, and a lot to think about, but we wanted to (briefly) explain why registering your new trade mark should be on that list.

But I've secured the domain and the company name at Companies House?

That's great.  But it's not enough.  Neither gives you any rights under the Trade Marks Act or under the relevant principles of the common law.  Neither alerts you to any risks that you might be taking under trade mark law.

But the common law says trade marks rights arise just from use of a brand?

Yes, it does.  And rights do arise through use – eventually.  The benchmark is around 5-7 years of use on a significant scale, by which time you have what lawyers call a "goodwill" in the brand.

So you're looking at several years before you have any kind of common law right in the business name, before you have anything you can use to defend your right to the name.

"Defend"? What do you mean? I thought this was about stopping others copying us?

That's an important part of it, yes.  But having an identifiable right in the trade mark is also valuable in that you then have the ability to stand up to a third party.  Anyone can file a trade mark application at any time, and under current rules it is up to you (as the prior user) to show that their application should be refused. 

If you have a prior-dated trade mark registration, then that's easy.  If you have the necessary 5-7 years of use on a significant scale, then it's feasible but a lot more work is involved. 

If you only have a couple of years use, then you don't have a legal right you can rely on. Their application is valid, will be granted, and then you'll be infringing their trade mark. That means you'll need to rebrand. 

What?  We started first but they'd be able to make us re-brand??

Yes.  UK law changed in 1994 to harmonise with the rather simpler systems that exist on the Continent, and this is one effect.  It happens, we've seen it.

What did you do when you started up, then?

We registered both the name (Downing IP) and the logo (top right) on the second day of operations.  We've since gone on to register the mark in Ireland, after we expanded to operate there as well.

So what will this cost, then?

To talk through the issues and work out what to file and where, nothing.  We don't charge for that work.

To do the filing and push the applications through to registration, that depends on the nature of the business and the scope of the applications, but it's probably less than you're imagining.

To find out more about how Downing IP Limiteds' approach can help you and your business, please contact:  info@downing-ip.com or 01494 422626.

Alternatively, we are more than happy to create an introduction.

Call Choice Business Loans on 01494 410125 or email: info@choicebusinessloans.co.uk