Don’t forget the trade mark protection

December 4, 2015

There are typically many urgent and complex matters which partnerships and LLPs need to consider when opening for business. Although often overlooked, ensuring that a firm’s name is protected by a trade mark should be one of those matters. International businesses in particular can forget that trade marks are territorial, so having a trade mark registration in, say, the US or Canada does not offer equivalent protection in Europe. Protecting reputation is critical in the professional services sector, which makes the protection that a trade mark offers all the more valuable, as well as serving as an indicator of a long term commitment to doing business in the country.

For trade mark registrations in Europe there is no use requirement for registration (unlike in the US), provided that the mark is used within five years of registration. It is therefore possible to register a trade mark in anticipation of opening a new office or new brand up to five years prior to the launch.
Without a trade mark it is more difficult to protect a firm’s name. In order to prevent a third party from using or registering a similar name, the firm would need to show that there is goodwill in the name in Europe (which might not be possible for new market entrants) and a misrepresentation by the third party. Unfortunately unscrupulous individuals can and do file trade marks to force genuine businesses to buy them.

Where should you file?
In order to protect a brand in Europe there are two options:

  • National trade marks in the territories of interest (e.g. UK, Germany); or
  • A Community trade mark, which covers all 28 territories of the European Union.

For most firms a Community trade mark would be recommended to cover possible European expansion. However, if the UK is the firm’s most important territory and it is not certain that it will open further offices then we would recommend filing both a UK and Community trade mark.

What are the benefits of a trade mark?

  • A registered trade mark gives an owner the exclusive right to use its mark on the goods and services covered by the registration. It can prevent a third party using a similar mark on the same goods or services if it can be shown that there is a likelihood of confusion. Having a registration is prima facie evidence of the mark’s validity and any third party wishing to cancel the registration has the burden of proving that the mark is invalid or revocable.
  • Registered trade marks are included on public registers and therefore the existence of an earlier mark will act as a deterrent to a third party considering adopting an identical or similar name.
  • It allows the brand owner to put the ® symbol next to the brand, to warn others against using it.
  • It enhances the firm’s ability to challenge unauthorised domain name registrants (cybersquatters) from using a domain name containing the trade mark.
  • A Community trade mark gives the owner the ability to secure injunctions to prevent infringement throughout all member states of the EU via a single court application.

What should I file for?

  • A word mark is typically the best form of protection, but if it is intended to use the mark with a particular logo then consideration should be given to registering the logo on its own and/or in combination with the name.
  • Although in the EU it is difficult to register slogans (as they are often refused on the basis that they are not distinctive enough or descriptive of the goods/services covered) it may be worthwhile attempting to do so.
  • Consideration should also be given to the goods and services that are being protected. For example, a law firm would clearly want to protect its brand in respect of legal services, but may also want to register its mark to protect its use in, say, education and training, seminars, printed matter and electronic and online publications.

Who should own the trade mark?

  • Overseas firms have the option of having the trade mark owned either by the overseas or local entity
  • If the trade marks are filed in the name of the overseas entity then licences should be put in place setting out the terms of use of the marks by the European offices and these licences should then be recorded at the relevant registries.

If you are interested in obtaining more information on filing trade marks in Europe then please contact our in house Senior Trade Mark Attorney Sarah Redmond or a member of the Trade marks team at Fox Williams LLP.

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For more information

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Sarah Redmond
Senior Trade Mark Attorney
Direct dial: +44 (0)20 7614 2532
sredmond@foxwilliams.com

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