When filing a trade mark or design in the UK and EU (and in a large majority of territories), you can do so without the need for an attorney. However, the chances of successfully registering that trade mark or design are significantly reduced if an attorney is not involved*.

What is a chartered trade mark attorney?

In the UK, a chartered trade mark attorney is a registered trade mark attorney who has undergone the necessary training and qualifications to advise on all aspects of trade mark, design and copyright law. A chartered trade mark attorney is a member of CITMA, the Chartered Institute of Trade Mark Attorneys, and is regulated by IPREG, the Intellectual Property Regulation Board.

This chartered status, and on-going regulation, means that UK chartered trade mark attorneys must maintain the highest professional standards and commit to ongoing professional development.

Why use a chartered trade mark attorney?

*For UK trade mark applications filed in 2018, UK chartered trade mark attorneys were four times more likely to get the application through to registration than a self-filer.

A trade mark can be what attracts investors to the business and so it is a wise investment in working with a chartered trade mark attorney from the start. Your brand is king and deserves the best start!

A chartered trade mark attorney will work closely with you to understand what is important to the business in or to help you realise the value of your brand and ensure it is future proofed. Accordingly, it is vital that your chartered trade mark attorney understands your business proposals and how you intend to achieve growth. This will shape the advice provided.

Firstly, a chartered trade mark attorney will be able to advise on whether the chosen brand is inherently registrable – i.e. is it distinctive and non-descriptive. If not, there may be a way to overcome such an objection and a chartered trade mark attorney can work with you to do so. In this regard, note that if a trade mark application is considered unregistrable, you will forfeit the official fee. It is much more cost effective to get it right from the beginning.

Before filing a trade mark application, a chartered trade mark attorney will conduct clearance searches to ensure that there are no conflicting marks on the Registers. Whilst anyone can conduct a search at the UK IPO, for free, a chartered trade mark attorney is best placed to review the results. It is possible for a confusingly similar mark in similar goods or services to be a bar to use and registration. If this is the case, a chartered trade mark attorney will identify conflicting marks and provide suitable advice. It may be that the conflict can be overcome or that, unfortunately, a re-brand is needed. However, it is better to have this information before launching a brand, rather than face legal action after launch. If a third party challenges your mark, and you lose, you may be liable to costs.

By understanding the business, a chartered trade mark attorney can also advise on the different goods and services which may require coverage and ensure the right protection is in place. A trade mark application must contain a list of the specific goods and services which are either in use or intend to be used under the mark. If a trade mark application is filed for the wrong goods and services, you will also forfeit the official fee.

It is a chartered trade mark attorneys’ job to help you avoid pitfalls during the trade mark process and give legal advice if issues do arise. Whilst the staff at the UK IPO will help as best they can, they cannot provide legal advice and must be impartial at all times.

With regard to designs specifically, a chartered trade mark attorney’s advice is vital here. Designs do not go through a rigorous examination process like trade marks and so errors in the application are often not identified until the design needs to be enforced. Further, if a design is not filed within 12 months from the date of first disclosure, it is not valid. A chartered trade mark attorney will ensure that the correct images are applied for and distinguished in the application form so that the design can be enforced in the future.

On enforcement, a chartered trade mark attorney can monitor third party use via a watching service and advise on enforcement issues to ensure your brand is not diluted in the future.

Finally, a chartered trade mark attorney will monitor deadlines such as when to respond to examination responses, file renewals and advise on the expiry of the non-use period (5 years after registration). It may not be possible to extend these deadlines and therefore, if they are missed you, will forfeit your application / registration.

By using a chartered trade mark attorney from the start, you will save money in the long run.

How do I decide which chartered trade mark attorney to use?

This is a really important decision and must be taken with care.

Before making a final decision, it is worthwhile creating a short list of potential attorneys and arranging a call / meeting to discuss your business and requirements. You should also obtain costs at this stage. Most attorneys will offer half an hour or so free for such calls / meetings.

You want an attorney who is passionate about your business, like you, and understands where you need to go in the future. You’ll know when you speak to the right attorney…so give Charlotte Wilding a call.

At Kemp Little we believe you really can have it all – superior service by world-class IP specialists at competitive rates.

If you’re not with us, why?

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