Once the application is successfully submitted, it is published in the trade marks journal for a period of two months so that interested parties are able to oppose to it. If opposed, the proprietor has the option to withdraw their application, talk to the opposing party, or defend their application. Legal advice is recommended if defending the application, and it can be quite costly to go through court proceedings.
If not opposed, the trade mark will be registered successfully which is evidenced by the issuing of a registration certificate. The owner of the trade mark will be able to object to similar trade mark applications, and sell, market, license, and mortgage the trade mark at will. It should be noted, however, that a trade mark may be revoked if it is unused for five years, and the proprietor will be obliged to report any changes to their name, address, and e-mail during the period of ownership.
Another obligation the proprietor will have is to pay renewal fees. A trade mark must be renewed every 10 years if it is still in use; this can be done between the last six months before the expiration and the first six months after. Note, however, that a late renewal fee of £50 is added if the trade mark is renewed within the first six months after expiration on top of the regular renewal fee of £200 plus £50 per each added class.
Unregistered Trade Marks
A brand does not have to be registered as a trade mark necessarily. Persons using trademarks similar to the proprietor's may be stopped using passing off. The proprietor must prove the following to prove passing off:
Ø The mark is indeed the proprietor's;
Ø The proprietor has built up goodwill associated with the mark; and
Ø The proprietor has been harmed in some way due to the passing off.
While it is possible to claim a brand or a mark this way, trade mark registration provides a significant amount of protection to the proprietor. Proving passing off is also much more difficult than proving breach of IP rights, and it can be quite more costly as well.
A domain name is the name a brand uses on the internet, most commonly on its website. While domain names can be crucial to a brand's online presence and goodwill, they are not a type of intellectual property, and cannot be registered as such. Consequently, being the owner of a trade mark does not automatically entitle a proprietor to use that mark as their domain name. If another person or legal entity is already using the domain name the proprietor was looking to register, there is nothing that the proprietor can do to challenge this unless the current user is proved to be using the domain name unlawfully or maliciously.
Online domain name registrars make it significantly easy, quick, and cost-effective to register domain names. In exchange for a small fee, a domain name may be registered and ready to use within as little as 48 hours. The most important aspect of a domain registration is to check the domain contract. A proprietor must ensure that they are the actual owner of the domain name rather than the registrar; clauses which give the registrar the right to revoke or change the domain name for no apparent reason must be cautioned against. The Internet Corporation for Assigned Name and Numbers provides a list of accredited and accreditation-qualified registrars which is a safe place to start when looking to register a domain name.
In short, while trade mark and domain name registration procedures in the UK seem straightforward, businesses must take extra care when it comes to preparing their brand for the future and registration timeframes. The process may also become more complicated if any of the intellectual properties trying to be registered is contested. Expert legal advice may be needed to assist businesses with these complex issues.
Guden International has highly trained legal professionals who have expert knowledge in the area of IP registration both in Turkey and the UK. If you are a business in need of intellectual property advice, please feel free to reach us by filling out our 'Contact Form' or emailing us on firstname.lastname@example.org