Forresters who has recently moved into the Port of Liverpool Building, are a leading firm of patent and trade mark attorneys, and have been working with an increasing number of Liverpool business owners who have lost significant sums of money due to inadequate trade mark registrations. Martyn Best reports.
Many of these issues are brought to their attention by the accounting and business advisers, and in this article Martyn Best, our Editor asks two experts in the field what we should be looking out for with our clients.
Kate Cruse, a UK and European Trade Mark attorney based in Liverpool
works extensively with Joanne Shelley,
a solicitor specialising in Intellectual Property at Chester-based Knight LLP to help businesses protect their IP.
Here Kate and Joanne talk with Martyn about the pitfalls of trade mark registration.
Martyn: “ What is the issue here, and what are the costs involved for our clients? “
Kate: “Businesses are running up bills of tens of thousands of pounds because they have not registered trade marks correctly.
“ Trade mark applications can be filed
at the UK Intellectual Property Office by an individual, but any application needs to satisfy rigorous rules, statutes and case law. Registering a trade mark is an incredibly intricate process and there are many areas where things can go wrong.
If a trade mark is incorrectly filed and registered, its value can be lower or even worthless.”
Martyn: “ So, what are some of the pitfalls, and what should our clients take greater care over?”
Kate: “ Common errors include filing a trade mark covering the wrong goods and services or filing a trade mark application in the wrong name. Covering the wrong geographical area is also a common mistake as is failing to ensure the copyright in a trademark is owned by the applicant. There have even been cases where businesses have registered the wrong trade mark.
“ If incorrectly filed, it may be impossible to rely upon your registered rights when making a claim for infringement against another trader.”
Martyn: “So, Joanne, how do you fit into this picture of advising our clients, and why do we need two lawyers ?”
Joanne: “As a solicitor specialising in Intellectual Property at Knights LLP I advise my clients upon the importance of ensuring that trade marks are correctly registered by obtaining appropriate expert advice from the outset, regularly reviewing their Trade Mark portfolio
and their business strategy including exploitation of their trade marks.
“ Unfortunately I am often approached
by new clients regarding trade mark infringement or ownership issues and have to advise upon the often costly impact and consequences of failing adequately protect the name of their business or their products and services. Clients have previously instructed me to enforce their rights against a competitor or infringer only to find that they are unable to do so because they do not in fact have the rights that they believed they had registered or purchased. Working closely with an expert like Kate and a client’s advisers helps gain the true picture of where any issues lie.”
Martyn: Do you see any other implications for poor housekeeping in this area ?
Joanne: “ I also see issues with incorrectly filed trade marks in the due diligence process when buying and selling a business. This can result in
a reduction of the purchase price of a business.
Martyn: Kate, what would your first advice be to help avoid a future problem?”
Kate: “ Good trade mark management starts with an IP plan which dovetails with your business plan. This will include regular reviews of trade marks, trade mark policing which involves monitoring third party and competitor activity and keeping track of renewal dates.”
“Collectively we aim to provide maximum protection to our clients from the outset – which is better than trying to remedy a problem later in the day.”