By Prof. Charles Oppenheim Senior Consultant, NKCC
To complement its existing suite of consultancy services and advice, NKCC now offers advice and consultancy on trade marks. There are two types of trade marks – Registered Trade Marks, administered by the UK Intellectual Property Organisation, for which one must apply for registration, pay application and renewal fees, but which gives the owner a powerful monopoly weapon for dealing with those who infringe the mark by using the mark, or something confusingly similar, for the same or similar goods or services in the UK. Other types of trade marks (often called “trade names”) are not the subject of a formal monopoly obtained by application procedures and payments, but can still be protected against so-called “passing off”, where another person or organisations uses the mark, or a confusingly similar one, in a way that damages the owner of mark’s commercial interests. The law of passing off predates the concept of Registered Trade Marks, and in some ways is more flexible than Registered Trade Marks. Indeed, there are far more trade names in use than Registered Trade Marks.
Whether registered or not, trade mark protection can in theory last indefinitely. In some cases, protection can be extended to outside the UK, though the implications of Brexit are as yet unclear for trade marks protected within the rest of the EU.
NKCC is now delighted to offer strategic advice about the commercial opportunities, risks, costs and benefits of registration. We can also advise on the procedures involved, the way to proceed with an application to register and help complete the forms that are necessary for a client to obtain a Registered Trade Mark.
But that is not all. NKCC can also offer advice about whether a Registered Trade Mark is appropriate for a brand, and the likelihood of success with such an application. We offer similar advice for trade names, though in such cases, of course, an application process and fees to be paid are not involved. We also offer consultancy on what to do if a third party infringes a client’s mark, or if a client is threatened with a trade mark infringement action by a third party. also can undertake trade mark searches for a client to ensure there is no pre-existing Registered Trade Mark to the one a client proposes to use. Finally, we would be delighted to advise on how to minimise the risk that a brand name is not subject to challenge by third parties.