HOW DO I APPLY FOR A TRADE MARK?

What are the four key things you need to consider before filing a trade mark application?

By Joel Barry

Trade mark ownership is about balancing cost and risk and risk and reward. There are 4 key things which you need to consider when filing a trade mark:

1. Who is the owner?
2. What is the mark?
3. What are the goods and services you need to cover?
4. Which territories do you wish to have protection in? 

Who is the owner? 

This seems like an obvious answer and often it is, but equally it can be based on tax considerations. Do you want your trade marks owned by your company or owned by you and licensed in? Do you want the rights owned in a tax friendly jurisdiction? Getting these considerations wrong can have serious implications if your business folds or, conversely, does really well and you want to sell it. It is important to get these things right from the start.

What is the mark?

 Again, that seems like it should be an easy question but should you file for CEC or CEC LEGAL or one of those with the circle logo – or even all of them? The answer to the question turns on what you want to protect/prevent others doing and is it worth the incremental cost?

What are the goods and services you need to cover?

Trade mark applicants tend to take a fairly aspirational approach to answering this question. A good benchmark is to ask yourself what you thing you my produce or supply under the trade mark over the next 5 year either yourself or through a licensee/partner? In the UK you need to have a genuine intention to use the trade mark in to the goods and services you protect, otherwise there is a risk that the trade mark registration (or at least part of it) could be held invalid. At the current time, we are waiting to see what the Supreme Court does with the SkyKick Case in order to see how bit a risk that is. For now, it is worth documenting your thought process and genuine intention.

Which territories do you wish to have protection in?

Like choosing the range of trade marks to protect what geography to cover is a question of cost/benefit. While there are some applications which cover large territories like EU trade marks which cover the whole of the EU in one application and OAPI which covers much of French speaking Africa. However,, most trade marks need to be filed on a country by country basis either directly through national intellectual property office or through the International Registration system.

For more information about  trade marks, contact:

joel@ceclegal.co.uk