'Brand' new approach to trade marks could spell trouble | 10 October 07

Companies are being warned to take a more active approach to protecting their trade marks or risk their key brands being devalued.

Intellectual property experts at leading North law firm Ward Hadaway warn that businesses which don’t keep a close eye on their brands and other trade mark applications could end up facing copycat labels or costly legal actions.

The caution comes after changes in the way the trademark registration process is carried out.

Previously, companies or individuals who tried to trade mark a brand, slogan or logo which was similar or identical to an existing trade mark would automatically have been turned down by the UK Intellectual Property Office (IPO).

However, from October 1, the IPO will no longer reject such applications out of hand.

Instead, they will just warn the trade mark applicant of any similarity, leaving that company or individual to decide whether to proceed with the registration process.

If the applicant decides to carry on, the IPO will inform the existing trade mark holder of the planned application, leaving them to decide whether and how to fight the move.

In addition, companies who have European Community Trade Marks will not automatically be told of any potentially trademark-infringing application in the UK unless they ask to be kept informed.

Bill Goodwin, assistant solicitor in the Intellectual Property team at Ward Hadaway, said: “This is a fundamental change to the way the trademark system operates in the UK and means that companies with valuable brands need to take a lot more care when it comes to protecting them.

“Whilst the changes may free up the process of trade mark registration for companies looking to protect new brands, it does pose a greater threat to businesses who already have trade marks and don’t take active steps to preserve them.

“It may be prudent for companies who set great store by their brands to start setting up watching services to ensure they get an early warning of new trademark applications in the UK and in other countries.

“They should also act quickly and seek expert advice if they want to oppose any applications.”