Most businesses start by looking at their trade mark protection as it’s relatively inexpensive and will help protect you against copycat brands as well as showing investors that you’re serious about growing a successful business. When protecting your trade mark, you need to think about the goods and services you’re going to offer in the next 3-5 years. You can’t amend an application once filed, or add further protection to an existing registration. So if you can stretch the budget, make sure you apply to protect a wide enough range to give your business room to grow. There’s no use requirement for the first five years in the UK, meaning that for the first five years your mark is registered it can’t be challenged by a third party on the grounds of non-use. This gives you time to work on your business, knowing that no one else can register the name before you.
Once you’ve decided on the goods and services, you need to work out which categories these fall into. This is something Bird & Bird can help with. The cost of the trade mark application is dictated by the scope of protection. The more categories, or classes, the higher the cost.
Once filed, the application will be examined – typically you’ll get a decision from the UKIPO in 1-3 weeks but it can take up to a couple of months, depending on how busy the UKIPO is. Assuming the mark is then published, there is a two month window when third parties can oppose. They can extend the period by one further month. Again, if no oppositions are filed, the mark will then be registered. End to end we’ve seen this in around 4-6 months, assuming there are no objections or oppositions, but it can vary.
Registered designs can again be filed online – this time you need to make sure that the pictures you use for the design application properly show the part of the design you want to protect. Designs should be clear and on a white background. Ideally you’ll protect as a line drawing, to give you rights across all different colour ways. However registering in colour might be necessary to give you the right protection.
Another option is to file multiple applications within the same filing – here you can file the main design / say the black and white version or image of the whole item / and then further applications for depict a specific colour or perhaps protect only part of a design, like a door or a cap without the bottle.
For any elements of the image you don’t want to protect you can use dotted lines, or shade it out to show protection is not claimed in those elements. You can claim protection in up to 7 representations – these will need to be high quality drawings, CAD images or photos. You can add other photos for context, but they won’t define the scope of your protection. The best way to capture your design is to submit images of each side: front, back, top, bottom and perspective angles.
You’ll also need to think about the category which your design fits in, and a simple description of what the product is. You can also defer publication, which means it stays secret. No images will be displayed on the record – and you can keep it deferred for up to 30 months. It’s a great way to get protection before a product launch but not disclose the design until after launch.
Take care if you want to get protection in other countries as well – some, like China, have a concept of absolute novelty, which means once you disclose it somewhere in the world you can’t get protection in China. So if you’re sharing designs with a third party, whether investor or manufacturer, make sure the proper protection is in place, namely a non disclosure/confidentiality agreement.
Copyright protection arises automatically – just keep a signed dated copy of any design drawings on file. Make sure you give proper author attribution on copyright content like webpages etc if you didn’t create that content. And remember that the first owner of copyright will be the author – so even if you commission the work, you’ll need an assignment from the author to ensure you own the copyright and can then use and exploit the work.