Intellectual Property
Clearance
Perhaps the single most important thing you can do! We can conduct clearance searches for Trade Marks, Designs and Patents. We have a special bespoke tool for conducting world-wide trade mark searches. Please contact us for more information about this. Trade Mark and Design Searches There are hundreds of thousands of brands or designs out there; as such Clearance is about ensuring that you are not adopting someone else's name, brand, or other IP right. Perhaps more importantly, nothing which is confusingly similar, covering the same or similar goods or services. It is these last elements, which are the difficulty. Even if you innocently adopt a trade mark owned by someone else, the consequences could be commercially damaging, as you could be stopped from using that trade mark. You might also have to pay damages. Just think of the costs of amending stationary, signage, packaging; and that is before you have the difficulty of explaining the change to your clients! Searching can take many forms. Preliminary search: What we like to call "Quick & Dirty". This is often used when trying to select a new name and it is essentially looking for identical marks. Very useful if you have say 10 marks to consider, the list can be pruned down with "Q&Ds". Full availability searches: As the name suggests, this is much more of an in depth review of the proposed trade mark. This would cover conducting Registry searches for confusingly similar marks in related product and service areas. We don't just have to look at the UK Registry there is a EU Register and an International Register too. Common Law searches: in addition to the Registry searches it might also be appropriate to conduct a review of marks that might be in use, but for which no application for registration has been made; so wouldn't be found on a Registry search. This would include reviews of Companies House records, domain names and extensive reviews of directories, targeted at the sectors of interest. Domain Names: You might have already checked these, but we might see something that is potentially more of a serious risk than you perhaps realised.
Copyright
Copyright is for printed matter, plays, music, computer programs and databases, logos and surface decoration. Unlike registered trade marks, registered designs and patents, copyright protection arises automatically; there are no registration requirements in the UK. Where a trade mark, design or patent inter-relate to copyright we are able to assist.
Design
This has become an increasingly important weapon in the protection of our clients' businesses. A design is mainly the shape of an article, think of your mobile phone, someone designed that shape and his or her employer doesn't want that shape stolen by a competitor or counterfeiter. Don't just think of mobiles, think of shapes generally, from packaging to furniture to the shape of a building; the list is endless.
But designs are not only the shape of an article, they can now also apply to logos, computer graphics or any other design which is appealing to the eye. The badge on a football shirt, for example the Arsenal insignia, which was rotated 180" a few years ago, whilst being a trade mark is also a registered design. There are benefits and drawbacks to both.
A design can be the whole article or merely a part of that article, depending what is novel and has what is called individual character; don't you just love legal speak! These two tests are judged by, what has been previously made available to the general public.
There are registerable designs, granting the owner infringement rights and there are unregistered designs. We call these unregistered design rights; these are like a copyright. We can help with both.
Stonefort advises frequently on the protection of designs and on related copyright issues. We handle the filing and prosecution of Registered Design applications in the UK, the European Community and other overseas territories. We also advise in relation to the rights applicable to unregistered designs in the European Community and the UK.
We can:
- Search your design to see if the design is novel.
- We can register your design.
- We can enforce those rights by appropriate legal actions.
Enforcement
You have a registration, like all forms of insurance, you hope that you don't have to rely upon it, but you might have to. This is enforcement.
It is important that you stop others from using identical or confusingly similar trade marks, domain names, company names or other identifiers that are the same or similar to your trade mark, because if you don't your customers (or potential customers) might be confused. This is going to result in damage to your business from loss of direct business or tarnishing of your reputation.
Unauthorised use can be innocent or it can be by design, either way if your customers are confused, your business will suffer; it's inevitable.
We advise on the options open to you and the likelihood of success. Frequently a well crafted "cease and desist" letter to the other side can settle a dispute, without need to initiate formal proceedings in the court, but if that becomes necessary, we do that too, with our litigation associates.
We can also deal with counterfeit products being sold on the internet or physically and illegal importation issues that may arise. With this in mind we have a number of specific enforcement tools which are provided in association with specialist enforcement agencies with whom we work closely.
We are also experienced in preparing and filing EU Customs Notices and liaising with customs and other government enforcement agencies.
Oppositions
Once your application has been accepted by the Registry, it will be published for opposition purposes. This enables a third party, perhaps your main competitor, who have been watching their rights, to object to your application. We are able to advise on the defences we can bring into play and the likelihood of success. We have extensive experiences in fighting oppositions in all jurisdictions. Conversely, it may be that you need to object to an application that has been published. Again we file offensive oppositions, again liasing with you on the arguments we can bring to bear and the likelihood of potential success. With oppositions, whether defensive or offensive we: Advise on the actions available to you. - Prepare a formal opposition document. - File arguments and supporting documentation in the form of witness statements and - Affidavits. - Prosecute the opposition in a timely fashion. - Cancellation / Revocation Even when a trade mark or design has proceeded to registration it may be vulnerable to cancellation for a number of reasons. A Design that turns out not to be novel or new at the time applied for could be cancelled. A trade mark may be vulnerable to cancellation on the basis that it should never have been registered in the first place because other prior rights existed (whether registered or unregistered). A trade mark that is not used for a number of years following registration may become vulnerable to cancellation on the basis of non-use. The usual time period is 5 years, but may vary from country to country. We can advise: - On the likelihood of success of a cancellation or revocation actions against a trade mark or design. - Instruct investigators or other search agencies to find out more about the validity or use of a design or trade mark. - Prepare a cancellation or revocation action on your behalf. - File arguments and supporting documentation in the form of witness statements and Affidavits. - Prosecute the action through to a decision.
Patents
Patents provide protection for inventions. A patent holder has the right to prevent others from using the invention defined in the patent for a period of up to 20 years.
The essential requirements for a patent to be granted are that it must be a new invention; the invention must involve an inventive step; and the invention must be capable of industrial application.
We, through our Patent associates, can provide assistance in all areas of patent protection and enforcement, including pre-filing searches.
Registration
The registration of trade marks for goods and services is the mainstream of our business.
Having chosen a trade mark, which is free, in the sense that searches have been carried out and no obvious problems have been revealed, the next step is to ensure that you can take control of that trade mark.
The registration process has several benefits.
Firstly, it provides you with a way of notifying the world that you have an interest in that mark, should someone else conduct a search, they can see your application or registration. This often encourages them to adopt and alternative name.
Secondly, it provides you with a means of enforcing your rights against unauthorised use of a similar trade mark. You would be entitled to seek an injunction to stop someone from infringing your rights and to seek damages.
Thirdly, it provides a defence against problems in that one registered trade mark can't infringe another, provided it is used within the specification for which you have registration.
Registration is not simply about the UK, but about the European Community, national EU countries and the rest of the world. We are experienced in UK, EU and world trade mark rights, using National registers, the Community Trade Mark Register or the International Register of the Madrid Protocol or Madrid Agreement.
We can attend to registrations in all countries of the world and our approach is to conduct this in the most cost-efficient manner.
We attend to:
- Filing applications.
- Filing formalities, like Powers of Attorney, legalisation of documents.
- Prosecution of those applications.
- Dealing with any official, or third party objections like oppositions.
Renewals
This is a maintenance function, after you have had a Trade Mark, Design or Patent registration for a few years.
Unlike the rights associated with designs, patents and copyright, all of which expire, but at different times, trade marks rights can potentially last forever; just think of some of the brands that have been around for years. They do this, so long as the trade mark remains in use and so long as renewal fees are paid. Renewal occurs at different times, but as a rule of thumb, think 10 years from when you took the registration out. However, in some places like the USA, you have to submit Declarations of Use between the 5-6 years of the registration, otherwise the rights can fail. In other countries we have to show examples of use on renewal.
Utilising our dedicated trade mark database record system and our international network of associates around the world, we provide a fully integrated renewals service.
We can provide:
- Timely reminders, well in advance of renewal deadlines.
- Attendance to renewals on your behalf.
- Attendance to Declarations of Use and the like.
- Recommendations as to whether renewal is necessary.
Trade Marks
In essence, a trade mark can be anything, which distinguishes your business from those of other traders. The most common are word or combination of words and logos. However, it could also be the shape of your products or their packaging, a slogan or musical tune used in advertising and promotion, like the direct line jingle. Less common and harder to protect are colours on their own or smells - but certainly not impossible. The question is whether there is anything that distinguishes your business from other traders - and can we put it down on paper - if so it is potentially protectable by registration.
Trade Marks can also be registered in a number of countries individually or even throughout the European Union via a Community Trade Mark ("CTM") which is a single trade mark covering all 27 countries of the European Union. There is also the International system known as The Madrid Protocol which can cover a range of countries together.
Stonefort provide a comprehensive and up to date trade mark service for clients wishing to register and protect their marks in the UK, Europe or further a field. We act for a range of well-known companies as well as small SMEs and individuals.
We have particular expertise and experience in dealing with the protection of trade marks outside the UK including, the Community Trade Mark system for the protection of trade marks and also designs and international trademark applications using the Madrid Protocol registration system or in individual countries using our network of associates around the world.
We can also advise on the enforcement of your trade marks including advising on infringement, passing off (and other common law rights) and counterfeit issues.
Other Services
Portfolio Management Services
Stonefort provides a comprehensive trade mark service, and manages the trade mark portfolios of many well-known companies.
We handle trade mark applications in the UK, European Union (using the Community Trade Mark System) and International Madrid system.
We also handle trade mark applications in every major jurisdiction in the world, including some less well known jurisdictions.
Disputes and Alternative Dispute Resolution Services
We handle numerous trade mark oppositions for both opponents and applicants, seeking effective commercial settlements for the benefit of our clients wherever appropriate, including infringement, passing off (and other common law rights) and licensing matters.
We can also advise clients on Alternative Dispute Resolution options and represent clients in such matters.
Re-branding services
We have extensive experience in dealing with re-branding projects and have experience in handling some of the largest re-branding exercises ever conducted.
We can advise on the best way of managing and handling small and large re-branding exercises, including full world-wide searching facilities (see below), and linguistic checks to make sure your proposed name does not have any adverse connotation in another language.
We also offer Brand Creation services, working with one of our Partners to develop a new brand or a brand update.
Licensing
We are particularly skilled in creating bespoke licence agreements. These range from broad initial strategy documents, often on a stage-by-stage basis, through to the more straightforward licensing of products for manufacture.
Trade Mark Searches
Clearance searches for trade marks and designs are perhaps the single most important area to be aware of before launching a new IP right and therefore we have a fuller section on this.
Domain names and the Internet
Stonefort advises frequently in domain name cyber-squatting cases and in relation to associated trade mark infringement, passing off and copyright infringement on the Internet. We can also handle the filing and prosecution of complaints against cyber-squatters under the ICANN Dispute Resolution Procedure provided by the World Intellectual Property Organisation in Geneva and the Dispute Resolution Service offered by Nominet UK, the UK's domain name registry. Other national disputes can be handled through our network of associates.
Intellectual Property Audits
We have a great deal of experience in dealing with IP Audits and can assess and audit existing IP Portfolios Intellectual Property. Our audits are conducted with your business objectives in mind and whilst working closely with your business. Our aim is to respond to the present and future commercial aims of the business concerned.
Brand Valuation is an additional service which is available through one of our Partners, either separately or as part of an IP Audit.
Watching Services
We don't mean that we watch a lot of TV, but what this service means is that we can monitor new applications that are being accepted and published, on a global basis, that could be a problem for your rights. We then advise you of potential problems.
This service can extend to Trade Marks, Domain Names or Company Names.
This is based on an annual subscription based service and is a cost effective way to "police your rights" and provide you with an early warning system, that some action might need to be taken.
You may have experienced the UK Trade Mark system for registration, where the Registrar in the UK objects to applications if they consider that another existing mark is too similar. That doesn't happen everywhere else. Even the UK is considering abandoning this procedure to fall into line with the rest of the EU.
The Community Trade Marks system that covers the EU and does not examine applications [to raise objections] for conflicting earlier registered marks or prior pending applications. The onus is on the trade mark owner, to ensure the protection of their rights. A Watching Service is therefore important to your business and the costs of that should be factored in to the costs of seeking and monitoring your rights.
We can implement a targeted Watching Service for you.
- We will notify you when anyone else files a trade mark application that gets published which might be a problem.
- We can also do the same for company names or a domain names.
- We advise on what action is available.
- We take that action, such as filing oppositions and objections round the world.
IP Corporate Due Diligence
Since we have extensive experience working within large law firms and with multi-national companies we are naturally aware of the need for cost effective and efficient checks and searches required for corporate transactions. We therefore provide a facility to assist corporate law firms and In-house corporate departments in relation to the checking, searching and clearing of IP rights throughout the world.
Through our close relationships with associates around the world and our access to specific searching tools we have been able to provide quick and cost effective assistance when required.