PROTECTION
Trade Marks and Designs
Our proactive and responsive team manages the trade mark and design portfolios for some of the world’s largest brands, as well as for small to medium-sized national and international businesses.
As we enforce trade marks and designs, we are well-placed to advise you on how to reduce the risk of infringing a third party's trade mark or design right and take proactive steps to make it easier to enforce your rights by acquiring the best protection. This approach makes the resolution of disputes easier and less expensive.
Whether your brand is new, established, or expanding into new markets, regions, or sectors, we ensure your rights are fully protected and ready for commercial use. Our team regularly instructs our partner firms around the world to assist our clients in securing the right protection in those countries.
The team provides the following services:
Strategic advice on what rights to secure
Trade mark and design clearance
Filing of national and international trade marks and designs
Watch services to identify conflicting rights filed or used around the world
Auditing of IP rights
Opposition, revocation, and invalidity proceedings before the UK IPO, EU IPO, and other national registries around the world
Ionic Legal
FAQs
Explore our comprehensive FAQs to find answers to your questions about Ionic Law.
You will be surprised what can be registered as a trade mark. Its not just word marks like Cola Cola, but smells, logos, colours, shapes of products and their packaging, and gestures. The smell of freshly cut grass has been registered for tennis balls and the campervan has been registered for various products.
In order to get these signs registered they need to meet the registration threshold which includes being a distinctive mark which is capable of distinguishing the goods and services of one undertaking from another. In other words, the sign can’t be descriptive of the goods or services covered and must be seen as a trade mark. So, you are unable to register the sign “soap” or "legal" for soap or legal services for example. These marks lack distinctiveness.
There are other registration requirements especially for shapes and of course you cannot register a sign as a trade mark if someone else has an identical or similar one for identical or similar goods and services.
Registering a trade mark simplifies the enforcement of your rights. Without registration, you would have to rely on the common law tort of passing off, which is more expensive and complex as it requires proof of goodwill and confusion. A registered trade mark provides more extensive rights, allowing for easier enforcement and licensing opportunities.
In the UK, obtaining a trade mark typically takes 4-6 months. For a European trade mark it can take around 6 to 9 months, while the process in other countries around the world can range from 2 to 5 years, depending on various factors.
This assumes that there are no objections from the registry or oppositions by third parties.
A UK and EU registered design can cover the whole or part of a product and can cover signs which can be registered as trade marks such as logos.
The design must be new and have individual character over other designs made available before the application date of the design (or any priority date).
Certain designs cannot be registered such as a shape of products which must fit or must match with another product. Examples include the pins of a plug which must fit into the socket, or a car panel which must match another. Also, parts which are not visible during normal use cannot be registered.
The process for obtaining a registered design is relatively quick, often within 1-2 weeks and the cost is low.
Registering a UK and EU design provides stronger legal protection compared to unregistered design rights as the right prevents all use not just copying (which unregistered rights protect against). Also, the protection period is much longer 25 years compared to 3 to 10 years for unregistered designs.
With unregistered designs, you must prove the date of first public disclosure as this is when the right starts, but with registered designs you do not need to show this as you will have the date on the certificate.
Registered designs make the process of enforcement easier and less expensive and it provides better protection.
IONIC LEGAL
Get in touch
Reach out to our expert team for personalised advice and support on protecting your intellectual property.