|
Should I register my trade mark?
The short answer is "yes", if you value the trade
mark, and have the money to spare. In each case fees vary
enormously, depending on the mark itself, the territory where
it is to be registered, and what it is going to be used for.
It would therefore be misleading to quote figures here, but
it is easy to obtain a quote of the likely costs, and we would
be happy to help with this.
If you do not have the money readily available and have competing
priorities, you need to consider your current position, and
the extent of the rights that you will have if you do not
register. You can then assess the likely benefits of a trade
mark in your particular case.
In the absence of a registration, you need to rely on a law
known rather quaintly as "passing off". The law
of passing off protects goodwill associated with the signs
of a particular business, and prevents somebody else from
taking unfair advantage of that goodwill.
This means that you must be able to prove the existence of
goodwill. You also need to show that the person that is passing
off has done something "deceptive" to make people
mistake his organisation for yours. Finally, you also need
to prove that this deceptive activity is likely to damage
your organisation.
Proving the existence of goodwill can be tricky if you have
not been trading for long, or if your organisation is small,
whereas inter-galactic plc will just bring out some press
cuttings. Showing deception can be easier than it sounds;
in the past, making a strikingly similar yellow plastic lemon
to sell lemon juice has been sufficient to prove deception.
If you register your trade mark, and somebody else uses it
for the same goods or services as in your registration, you
do not have to prove that you have goodwill. If they are using
a similar mark or are using it for similar but not identical
goods, you will need to show that people might take their
organisation for yours.
Similarly, there is no need to show likely damage as a result
of infringement of your trade mark. It is unlikely that you
would take action if there were no damage, but at least there
is no need to prove it in order to take action.
There is a further added bonus with a registered mark. You
can stop somebody from using your mark for different goods
or services from those in your registration, if their activity
is likely to be detrimental to your mark. So, for example,
Visa prevented its mark from being used on condoms, although
for some reason Ever Ready failed to do so.
If you intend to let somebody else use your trade mark, perhaps
for sponsorship, franchising, or as a distributor, it is advisable
to register, and to have a carefully worded agreement with
the organisation that will be using it. Similarly, it is crucial
to register if you may want to sell your trade mark separately
from the goodwill associated with it.
As you may appreciate, we have had to simplify some of the
material that we have set out above, so you need to obtain
professional advice to suit your individual circumstances.
|
