Trade Mark Registration in the UK | Benefits, Fees, and How to Avoid Unnecessary Costs
In this short article, we explain how not having your trade mark registered could have a detrimental effect on your ability to win in court should a commercial dispute arise.
KANGS regularly acts for parties involved in intellectual property disputes. Given the obvious and significant value in trade marks, and where possible, any business that recognises the importance of its Intellectual Property Rights (IPR) will seek to register any applicable rights it can, whether they are trade marks, design rights, or patents.
There are many benefits to having registered IPR. Registration can be used as security when a company is seeking to raise capital, or to increase revenues through licensing and exploitation of the IPR. The most significant element of having registration (where registration is possible) is that, more often than not, it stands as a ‘prima facie’ inference of matters such as ‘goodwill’ and ‘reputation.’
Stuart Southall of KANGS comments upon pertinent aspects of trade mark registration, the benefits of registering your IPR in the event of a dispute with a commercial rival and offers a warning involving payment of unnecessary administration fees.
Protecting Unregistered Trade Marks
Where a trade mark has not been registered, the owner, in the event of a commercial dispute, would have to be reliant on the ‘tort of passing off’ which provides limited protection for unregistered marks.
To succeed in a passing off action, the trade mark owner must satisfy the 'trinity' i.e. that they have goodwill and reputation in the product and/or service offered under the mark, that a competitor is using a similar or identical mark for a similar or identical good or service, and that the unauthorised use by this competitor is causing the trade mark owner to suffer loss and damage. This can be an expensive process.
Trade Mark Registration Fees
Compared to many other jurisdictions, the securing of a trade mark within the United Kingdom is relatively inexpensive. If you use a professional, and given the significance of IPR, it is always recommended that you do, you are likely to incur professional fees and disbursements i.e. payments made to third parties, such as fees payable to the UKIPO for filing the relevant application.
Once those fees have been paid, no further fees are payable unless, for example, there is a challenge to the application and opposition proceedings occur. Notwithstanding this, there are companies who send letters to applicants advising that further fees are payable or inviting them to pay to be included on a register.
Generally speaking, if you receive such a payment demand, there is no need to pay it, these demands will not secure your IPR beyond the steps you have already taken, nor do they offer any additional protection beyond that provided by the UKIPO (or any other applicable Office). Protection and enforcement of that protection rest with you, as the IPR owner. Paying them, will be simply wasting your money.
How Can We Assist?
The lawyers at KANGS have extensive experience assisting clients with every facet of trade mark and intellectual property law. Whether it involves registering a trade mark or navigating complex intellectual property infringement disputes, our team is here to provide you with clear and actionable guidance. Should you require expert legal assistance, please contact us using the details below:
Tel: 0333 370 4333
Email: info@kangssolicitors.co.uk
We provide initial no obligation discussion at our three offices in London, Birmingham, and Manchester. Alternatively, discussions can be held through video conferencing or telephone.
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