Tag Archives: IPO

Intel Top League of UK Company Name Tribunal Cases

Company Names Tribunal League TableAmerican chip maker Intel top the league for challenges brought to the UK Company Names Tribunal. Over the last 4 years they have challenged 46 companies over their name and have won 45 of their cases. The loosing companies have typically had to change their name and pay a fine of around £700.

When you register a UK limited company at Companies House they will do a few basic checks on the company name. This includes making sure it does not contain ‘sensitive words’ and that it is not ‘too similar’ to the name of an existing company. However Companies House do not check whether you new company name breaches anyone else’s intellectual property.

If someone does get a company formed at Companies House that you feel infringes on your own company name then you can challenge them through the Company Names Tribunal which is overseen by the Intellectual Property Office (IPO). So, for instance, Intel successfully challenged new companies which had been formed with names such as Intel Computers Limited, Intel Power Limited, Health Intel Limited and SAINTEL LTD.

Many of the companies bringing challenges through the Company Names Tribunal were, like Intel, IT companies. The two other biggest sectors bringing challenges were banks and insurance companies. The top 10 companies bringing challenges were:

Company Challenges
Intel Corporation 46
Imperial College of Science Technology & Medicine 9
Oracle International Corporation 8
Zurich Insurance Co. Limited 7
Sun Microsystems Inc 6
Allianz Insurance PLC 4
Prudential IP Services Ltd 4
The Coca-Cola Company 4
Verizon Trademark Services LLC 4
Virgin Enterprises Limited 4

The vast majority of challenges brought to the tribunal were successful. Often these were fairly straightforward cases of people forming companies whose names were nearly identical to large multinational corporations. A new company called Coke Cola Limited quickly found themselves being challenged by The Coca-Cola Company. A new company called Jaguar Land Rover (UK) Limited was quickly challenged by the carmaker Jaguar Land Rover. The vast majority of the cases brought to the tribunal (86%) were undefended. That is that the new company accused of infringing on an existing company did not try to defend themselves. In these cases the Company Names Tribunal always found in favour of the company bringing the complaint. Of those companies that did try to defend themselves nearly 30% were successful and were allowed to keep their name.

The number of cases being brought before the Company Names Tribunal shows both that there are a lot of people trying to register dodgy company names and that it is important to check your new company name will not encourage any challenges.

If you want to know whether your Company Name will be allowed we can do a trademark search for you. This will ensure that your name is available at Companies House and that it is not going to infringe on any trademarks.

How Healthy is your Company’s Intellectual Property?

Small Busiess Intellectual PropertyIntellectual property is often an area which small businesses overlook, either because they think it is not relevant to them, or because it is surrounded in complex rules. The Intellectual Property Office (IPO) have been making a lot of effort recently to educate small businesses about intellectual property and have recently launched an online Intellectual Property Health Check Service.

There are four main types of Intellectual Property, all of which can be used by start-ups and small businesses. These are:

Patents: Getting a patent can be quite a slow and costly process. It can take two to three years and will normally cost £200 to £300 plus the costs of a specialist trade mark lawyer. You can only patent something if it is an invention which no-one else has seen before and if it can have an industrial use. It is difficult to patent anything which is not a physical object. So, for instance, scientific theories, business methods or computer programmes are not normally patentable. The major benefit of having a patent is that you can stop rival businesses from copying your idea or you can licence it to them for a profit.

Trade marks: It is much more common for a new start-up business to apply for a trademark. Trademarks cover the name and logo of a business, effectively covering it’s brand image. It is the only way in the UK to get real protection for a business name. Sole traders who make up the majority of businesses in the UK do not have to register their business name. Forming a limited company stops anyone else from registering a company with the same name but it does not stop them from trading under a name identical to an established business. A trademark means you have an absolute right to a business name. Trade marks have to be applies for in one or more of the 47 categories used by the Intellectual Property Office. You have to pay a separate fee for each category or class of trade mark which normally costs in the region of a few hundred pounds.

Designs: Design protection is probably the least known form of Intellectual Property protection. It covers the appearance of a products. This includes the visual look of the products and the materials it is made from. There are some automatic rights assigned to a design and it may overlap with copyright protection. However the most secure way to protect a design is to register it with the Intellectual Property Office. This normally costs £60 and the protection can last for up to 25 years. Having a registered deign is a bit like having a patent, you can use it to stop people copying your ideas or as the basis for a licensing agreement.

Copyright: Copyright is an automatic form of Intellectual Property Protection. It covers written material and recordings. It starts from the point where something is published and normally lasts for 70 years after the death of the creator. Copyright is useful for businesses as it can cover sales materials, website contents, computer programmes, training materials and anything else that is written or recorded. It is normally used to stop anyone else from copying your work but can also be used as the basis for licensing agreements. Because it is an automatic right you do not need to register anything. It is sensible though to establish the date when a work was created. This can either be done by publishing it or by lodging it with a solicitor or sending yourself a copy by recorded delivery.

While it may not be at the top of your list when starting a new business getting your Intellectual Property sorted can be very valuable down the road. It can stop people trying to copy or take advantage of your good name and it can protect your products and ideas. Properly documented Intellectual Property can also be classed as an asset in the company accounts and can become a revenue stream in its own right.

If you want to find out more about how your business can use Intellectual Property you can speak to one of our business consultants. We can also conduct trade marks searches for you and help you with the trademark registration process.

IPO Warn About Misleading Trademark Renewal Notices

We register trademarks for a lot of our customers. As a result we end up getting a lot of invoices for trademark renewals, community trademark filing and entries into public registers. They look official and are sent by official sounding companies but unfortunately a lot of these are not legitimate invoices.

The companies that send them out use the publically available trademark information to compile mailing lists and then automatically ‘invoice’ everyone who has registered a trademark. Recently they have even sent invoices for trademark fees to the Intellectual Property Office (IPO), who are the body responsible for collecting these fees (see the example below). The IPO have posted some of these invoices on a new warnings section of their site. They refer to them as misleading invoices and point out that they asked for payments of £1500 for a trademark renewal which should have cost £350.

The IPO point out that the only organisations which offer legal trademark and patent services in the UK other than themselves are the European Patent Office (EPO), The Office for Harmonization in the Internal Market (OHIM) and The World Intellectual Property Organization (WIPO). If you receive an invoice asking for payment from anyone other than these organisations then the IPO advice is not to pay it. They suggest instead that you consult a trademark attorney, solicitor, trading standards or give them a call direct.

Trademark are the best way to protect your business name. Before launching into a trademark application we recommend conducting a trademark search to see what words or phrases are already taken. If you would like more information about how trademarks can be used to protect your business please get in touch.

Non-IPO Trademark Invoice

A 'Misleading' Invoice sent to the IPO requesting payment to for a trademark renewal

What is a trade mark?

Trade marks are part of your intellectual property. Intellectual Property is a way of identifying who owns an idea. If an idea is covered by Intellectual Property then it is protected. Anyone who wants to make money from that idea has to ask permission and may have to pay. Not all ideas can be covered by Intellectual Property. To start with they have to be shown to be unique and original. In the UK there are 4 types of intellectual property which are

  • Patents – Have to be applied for and cover new inventions
  • Design – Can be applied for but there are some automatic rights, covers the way things look
  • Copyright – An automatic right covering anything written, includes books, music and websites
  • Trade Marks – Covers brands, names and logos. Has to be applied for

Trade marks can be applied to most companies. As they cover words and logos they can be used to protect company names, product names and logo designs or both. This is to stop people from setting up copycat companies or products which try to imitate yours and steal your customers. Trade marks are particularly important for UK companies as they are the best way to secure a company name. Trade mark rights are stronger and easier to enforce than standard company name rules. So even if you have registered a company name with Companies House you can still be stopped from using it if someone has a similar name trade marked.

Getting a trade mark search done before naming your company and then seeking trade mark protection is, therefore, essential. However the rules around what can and cannot be trade marked are complicated somewhat by trade mark classes. Trade marks in the UK are looked after by the Intellectual Property Office (IPO). The IPO break trade marks down into 45 separate classes. It is possible to have a company or product name registered in one class and an identical company or product name registered by someone else in a separate class. A classic example is that ‘Polo’ the mint does not clash with ‘Polo’ the car because they are in different trade mark classes. The basic principle is that no-one is likely to confuse the two objects, a mint and a car, therefore it is OK for them to share a name.

Currently all UK trade mark applications are kept by the IPO. They are valid for 10 years and then have to be renewed. The IPO also hold details and reciprocal relationships with the European Union and countries who are signed up to the Madrid Protocol. This means that you can easily get protection for your brand on an international level.

If you would like assistance with a trade mark search or are considering a trade mark registration then our legal team can help you.

Filing a Trademark

filing a trademarkIf you are running a limited company or any other sort of business, then you will want to protect your interests. The last thing you want is someone stealing your ideas or making a profit off your good name. To get the best possible protection for your business it’s a good idea to file a trademark. Filing a trademark involves registering your mark with the IPO (Intellectual Property Office) also known as the Patent Office. However, most people soon find that filing a trademark is not as simple as it might first appear.

Trademark law is a complex thing. Governed by the Trade Marks Act 1994, broken down into over 100 sections; the law covers everything from filing a trademark, requirements of registration, reasons for rejection and enforcement after filing to name a few.

What is a Trademark?

The first place to start is establishing what a trademark is.

Section 1(1) states:

In this Act a “trade mark” means any sign capable of being represented graphically which is capable of distinguishing goods or services of one undertaking from those of other undertakings. A trade mark may, in particular, consist of words (including personal names), designs, letters, numerals or the shape of goods or their packaging.

So, as you can see, a trademark can potentially consist of anything from a company name to a logo, slogan, brand or product name. Filing a trademark will lead to protection for one or more of these things as it is entered on the register and protected from use by anyone else.

Filing a Trademark – The Requirements

There are a number of rules that need to be satisfied before a trademark can be filed. The reasons for trademark rejection are specified by Section 3 of the act and these combined with the guidance laid down by the IPO make it clear that to carry out a trademark filing, the mark must be:

  • Sufficiently Distinctive – In the sense that it stands out from other trademarks on the register and in the market place.

While it must not be:

  • Illegal, offensive or deceptive in nature,
  • Descriptive of your product/service or trade,
  • Something which is customary in your line of trade,
  • Listed as a protected symbol (see Section 4 of the act – things like Royal crests or National flags).

If these requirements are satisfied then the IPO are likely to accept a trademark registration as long as there is not already a mark on the register which it deems to be the same or too similar to the proposed trademark.

The IPO have provided a short list of what will not be deemed as sufficiently distinctive:

File a Trade mark

Common registration misconceptions listed by the Intellectual Property Office

Filing a Trademark – The Classes

Because of the variety of businesses and the kinds of trademark likely to be registered, trademarks are broken down into various “trademark classes“. This means that when filing a trademark, you need to be sure to file your mark under the correct class. Classes are made up of either “goods” or “services” and in 45 sections. It is possible to register a trademark in one class or section when there is already a similar or identical trademark registered under another class. This is due to the fact that because of the nature of business the two trademarks (and their companies) will never interfere with each other. There are real life examples that you can see in our other article on the benefits of registering a trademark.

Carrying Out a Trademark Search

Before attempting to file a trademark, it is important to perform a trademark search. This involves examining the register to ensure that your chosen trademark is not already present. Carrying out a trademark registration without first carrying out a search could mean you end up losing your trademark filing fee when the registration is rejected by the IPO. TheCompanyWarehouse.co.uk offer a trademark search service as an optional extra when placing a company formation order with us (or as a separate service if necessary). Our service involves a carrying out a thorough check of the register and supplying you with a comprehensive report. We charge a small fee, but the cost is far less than you would pay if you attempted to carry out a registration without first ensuring the register was clear of similar or identical trademarks.

Filing a Trademark Using The Company Warehouse contact-us

Due to the complex nature of the law, the various classes and the regulations surrounding trademark registration, it is highly recommended that you use a professional to help you file a trademark. TheCompanyWarehouse.co.uk has a dedicated trademark team who have the experience and knowledge necessary to give you a high quality service at a low cost. Thousands of companies and businesses over the years have used us to perform filing on their behalf. Our trademark registration service involves specific guidance on how best to protect your trademark, which classes to file it under based on your type of business and the activities you cover and more. We will then carry out the registration on your behalf, drafting the necessary paperwork and submitting the application to the IPO. We monitor your trademark through the whole process and once it is registered we send you the trademark certificate, as proof of complete registration.

Once the necessary paperwork has arrived with the IPO (and has been date stamped), Section 33 of the act says this is when the trademark filing is complete. Theoretically the trademark is then protected as long as it is not rejected by the IPO during the registration process. Filed trademarks deemed as acceptable by the IPO are placed on the trademarks journal which is published each week in order to allow potential objections to be submitted. Objections to registration can be submitted up to 2 months after publication. Once a trademark makes it through this period and is accepted on to the register it is then properly protected.

What Filing a Trademark Means To You

Filing a trademark has a number of benefits as you will have seen in our previous article. The first is that you can use the ® symbol, to denote a registered trademark (or RTM). You will then be able to take legal action against anyone attempting to use your trademark in their own business and thus protect your interests. Trademarks also have a value in the fact that they become a commodity that you can sell on. Filing a trademark does not however provide permanent protection. Trademarks need to be re-registered every 10 years in order to ensure lasting protection on the register.

Warnings From The IPO

The IPO have issued the following warning. Please be wary of these companies and be sure to use a professional trademark team like TheCompanyWarehouse.co.uk to complete your trademark filing.

IPO Trademark warnings

Contact us today for further guidance or to carry out a trademark registration/search.

Filing a trademark