Trade marks: Don’t be left behind

Albright IP patent attorney Frederick Noble explains why it is a good idea to regularly review your trade marks

Patent attorney Frederick Noble

Do I need to keep updating my registered trade marks?

Getting your trade mark registered early, preferably before you even start trading, is a good idea. Of course, I don’t need to tell you that. You registered your trade mark years ago and since then have been getting on with your business safe in the knowledge that the right to use your name, and the right to prevent others coming too close, is secure.

A registered trade mark can be renewed forever. But that doesn’t mean that protecting your business name should be a matter of “file and forget”. It shouldn’t be a big effort, but if it’s been a few years since you registered your trade marks or looked at the registrations, it is worth a bit of a review.

Is your core brand registered in all the forms in which it is used?

A registration for a word in plain font is usually best, but registrations for logos and stylised versions are a good idea as well. You might have just registered one mark at the beginning to save costs, but it is probably not too late to file additional applications to ensure the best protection.

Is your trade mark registered for all the goods and services you now use it for?

It is not unusual for a growing business to expand its offering. For the best protection, the registrations should include both broad and specific terms covering the full range of goods and services in relation to which the mark is used. New registrations should be considered whether or not that means a registration in new classes, or in the same classes as before but with an expanded specification.

Are you planning to expand geographically?

You may have made the sensible decision to keep costs low at the beginning by registering just in the UK and maybe one or two other jurisdictions, but it is worth keeping this under review.

If you now have your eye on overseas markets it is well worth filing applications there. EU trade mark applications are a cost-effective way to protect across all EU countries, and we can also advise and assist with protection worldwide.

Are your contact details on the register up-to-date?

Sounds obvious, but there are probably thousands of registrations with old addresses which have just never been updated. It’s a simple problem but the consequences could be really serious. If your mark is challenged and you don’t reply, the opponent will simply win by default. Also, you won’t receive notifications if someone else tries to register a similar mark.

Treasure the old

So, having reviewed things you are going to apply for some shiny new registered trade marks. Do you throw the old ones away? Not necessarily. These will have an earlier filing date and may still be valuable.

We are happy to help you with a review of your trade mark position. Just get in touch and speak to one of our qualified trade mark attorneys.