SERVICES

We offer a full range of services in relation to securing, protecting, maintaining and enforcing your trade mark and design rights. We also specialise in providing high quality strategic advice to help individuals and businesses build successful UK, EU and Global trade mark and design portfolios. Additionally, we provide advice on domain name and copyright matters.

We can tailor our services to match your business needs and objectives. If you would like to chat to us to determine how we can help you to protect your trade marks and designs, and to maximise their potential, please get in touch.

 

A well thought through strategy is crucial in maximising the potential and value of your trade mark/design assets and helping to give your business a competitive edge in the marketplace.

  • An initial free strategy report, identifying potential trade mark and design elements for protection and assessing the strengths, weaknesses, opportunities and risks of your portfolio

  • General advice and practical tips on optimising your trade mark and design rights

  • Targeted strategy reports - for example, if your business is contemplating a licensing deal or looking to expand, we can focus on these specific areas

  • Regular reviews of your portfolio to ensure that our strategy is aligned with the current position and future plans of your business, and also that the strategy evolves as your business grows and develops

 

SEARCHING

Searches are an important and effective tool to determine whether your chosen brand name, logo and/or design image are available for use and registration. Searches detect and identify potentially conflicting pre-existing rights and can help you decide whether to proceed with using/ registering (and investing in) your chosen mark and/or design. We recommend conducting searches as early as possible.

  • Identical trade mark searches, covering most online databases worldwide, helping narrow down your brand name/logo selection choice

  • Full trade mark clearance searches will give you a comprehensive analysis of any existing rights and the risk to your use and registration of a proposed name, logo, image from both legal and commercial perspectives

  • Design searches and investigation

  • Trade mark in-use searches and investigation

  • Trade mark/design owner search (competitors and third parties)

  • Company name, domain name and social media name searches

We help clients obtain registered trade mark and design protection in the UK, Europe and other countries across the world. With our strategic and practical approach, we will make sure that your trade marks and designs are filed and registered in the most relevant and cost-effective way.

  • Preparing applications to make sure they meet the requirements of the relevant IP Office ("IPO")
     

  • Drafting specifications covering your goods and services of interest
     

  • Filing applications directly with the UKIPO and EUIPO
     

  • Filing International applications via the Madrid system where appropriate (designating territories of interest if they are party to Madrid)

  • Filing national applications overseas - we work and collaborate with a network of trusted firms/colleagues and partners, to secure your registrations                                                                         

  • Prosecuting applications through to registration before the UKIPO and EUIPO - updating you on each stage of the application process and helping to overcome Examiner/third party objections if they arise
     

  • Defending applications should any oppositions be filed by competitors/third parties
     

  • Informing you of registration as soon as possible and advising on post-registration maintenance of your rights

 

MAINTENANCE & PORTFOLIO MANAGEMENT

A well-managed and reliably maintained portfolio, is crucial in ensuring that your trade mark and design rights are valid and ready for any opportunities that arise, such as licensing deals and raising investment. As your business develops and expands into new markets and/or new product and service areas, it is important that all of this information is accurately recorded and kept in an easily accessible (secure) format.

  • Maintaining comprehensive records of your portfolio (full case listings)
     

  • Making sure your portfolio is kept up-to-date, with pro-active, reliable and timely maintenance and reporting
     

  • Fee monitoring and reminder service (free of charge). For example, on any official fees due, to keep registrations in force
     

  • Reviewing your portfolio to make sure that relevant registrations are renewed at the appropriate time and handling renewals with IP offices                                                                       

  • Advice and help with building a library of examples of use of your trade marks and designs, for evidence of reputation and for any potential proceedings (enforcement and defence)
     

  • Reporting on budgetary forecasts for your trade mark and design matters
     

  • Management and development of portfolios to maximise their commercial value and making sure your rights continue to match your business requirements and objectives

 

WATCHING & MONITORING

Once you have your trade mark and/or design applications in place, it is important that you fully protect and enforce your trade mark and design rights, to maintain, preserve and strengthen your rights and business reputation. A pro-active intelligence-led approach, with early detection of potentially conflicting rights, is the best way to ensure that your trade mark and design assets work hard for your business and keep you ahead of your competition.

  • Trade Mark and Design Watches - words and/or images. Determine if other brand owners/third parties are filing applications identical or similar to your own. We advise on whether any action is recommended against an identified application e.g. through requesting withdrawal or filing an opposition
     

  • Owner/Applicant Watch - determine which trade marks and designs your competitors are filing                                                 

  • Application/Registration Status Watch - notifying you of any changes to a competitor/third party application or registration
     

  • Company Watch - lets you know the status of a competitor/third party company
     

  • Web Watch - online monitoring of your own trade marks and designs is helpful in determining whether there are any infringements of your rights, and that any usage by third parties (where not infringing e.g. licensed use/consent to use) is in accordance with your brand/design guidelines

 

ENFORCEMENT & 

ANTI-COUNTERFEITING

Enforcing your trade mark and design rights is an essential part of protecting your business and its reputation. Challenging the unauthorised use of your trade marks and designs (in e.g. infringing/copycat products), is crucial in preventing the dilution of your rights and helping to strengthen and maintain your position in the marketplace.

 

The rapid rise in counterfeit products also means that it is important for brand and design owners to utilise anti-counterfeiting strategies and services to effectively combat the production and sale of fake goods.

  • Advice on infringement, passing off and anti-counterfeiting matters

  • Strategies for protecting and enforcing your rights in the UK, EU and across the world, such as online and offline watching and challenging/combating infringements as early as possible

  • Drafting of correspondence and cease & desist letters to infringers/third parties

  • Corresponding with online platforms and marketplaces - requesting take downs/removal of infringing content

  • Anti-counterfeiting strategies such as UK, EU or worldwide customs recordals and online /offline monitoring

  • Liaising and working with the relevant authorities and enforcement agencies such as trading standards in investigating and taking action on counterfeit products (and coordinating with our overseas associates for actions in other countries)

  • Providing litigation support and instructing Counsel in the UK and other relevant countries to assist with contentious matters

 

DISPUTE MANAGEMENT

The aim of our strategic and practical approach in terms of selecting and protecting your trade marks and designs, is to help clients to avoid disputes and conflicts with other brand owners and third parties, where possible. Where disputes cannot be avoided and we need to contact the owner of a conflicting trade mark/design, or we have notice of a conflict, we work hard to try to resolve the matter and deliver a good outcome for your business.

  • Early identification of potential conflicts (for example, through searching and monitoring) - helping to increase the likelihood of being able to avoid a dispute, or to resolve a dispute before formal proceedings or litigation commences

  • Taking action on your behalf in oppositions, cancellations and appeals at the relevant IP office/court (and defending your rights where required)

  • Negotiating with third parties to help resolve disputes and the drafting of settlement agreements and relevant undertakings

  • Providing litigation support and helping to prepare evidence for clients if court proceedings are necessary (usually a last resort)

 

COMMERCIALISATION

The exploitation of trade marks and designs, is key to helping your business generate revenue and increase its commercial value. We help clients to identify trade mark and design assets which could be commercialised, for example through licensing agreements, joint ventures and assignment of rights. Once relevant assets are identified we will help you implement an exploitation strategy for maximising the potential of your trade marks and designs.

  • Review and identification of trade mark and design elements for potential exploitation and strategy for commercialisation

  • Auditing and advice on portfolio enhancement - making your portfolio more attractive to investors and third parties

  • Advice on transactions - licences, assignments, sponsorship, merchandising, royalties, acquisitions and disposal of trade marks and design assets

  • Drafting of trade mark, design and copyright licensing and assignment agreements (and recording with the relevant IP Offices where appropriate)

  • Conducting due diligence (comprehensive appraisal of potential trade marks and designs) - for example, prior to a purchase, sale or merger of IP assets

  • Portfolio Management for taking in incoming trade marks and designs following a transaction, for example, purchase, assignment of rights

 

DOMAIN NAMES & E-COMMERCE

The online marketplace/ ecommerce are crucial for any business, with domain names playing an essential role in directing customers to your website. Understanding the relationship between domain names and trade marks and the importance of obtaining trade mark protection for your domain names at an early stage, can help avoid any issues and disputes with third party Registrants and cybersquatters. In addition, the development of proactive online/ ecommerce monitoring strategies, will help you to effectively protect and police your brands online.

  • Strategic advice on selecting names for domain name registration and obtaining the appropriate trade mark protection

  • Domain name registration, maintenance and renewal through our external partners and service providers

  • Online monitoring of domain names to check usage and registration by third parties and to check for infringements of your trade mark rights

  • Advice and support on unauthorised domain name use and website content (where there are potential trade mark infringement/passing off issues)

  • Dispute management and resolution - corresponding with registrants and cybersquatters with the aim to reclaim/transfer back a domain name

  • Taking formal action against infringers and cybersquatters via a Dispute Resolution Procedure to reclaim a domain name