By Clive Bonny Clive@consult-smp.com Strategic Management Partners 07973 799153

Clive is a certified IP advisor and registered mediator for IP dispute resolution

www.consult-smp.com

The Problem

All business traders with a business name or logo which is confusingly similar to a third party registered trademark in the same class of goods or services can create legal liability for infringement and may be sued by the owner of the registered trademark.

Case law shows that owners of registered trademarks can claim up to half the historical profits of the infringer. Infringers can be sued in either criminal or civil courts resulting in a criminal record and a large financial penalty. Ignorance of the law is not a mitigating factor.

Many trademark and design attorneys regularly search google and companies house register to identify infringers on behalf of their clients.

Companies House registration does not protect infringers who fail to check the Intellectual Property Office “IPO” databases of registered trademarks and designs.

Buying a domain name does not protect infringers. Registered trademark owners automatically have ownership rights over associated domain names and can sue infringing domain name owners who use confusingly similar names to the registered trademark holder.

The Search

To avoid the risk of infringement it is essential to search the IPO databases related to the geography and trade sectors of the business and related brand names. The EUIPO and the UKIPO have different databases for trademarks and designs. Over 2 million trademarks are on the registers with over 100,000 added every year. Over 100,000 have been registered in classes 35 and 42 for business advice and scientific services and over 50,000 in class 9 for scientific and design products. The databases must be searched separately using different filters for exact words, phrases and similar words. Over 350,000 oppositions have been lodged and a large percentage of SME’s suffer infringement problems.

Enforcement of IPR Chart

Reputation Risk

Every year in UK alone over 10,000 trademark applications fail due to incomplete searches. These applicants not only lose their application fees but also may be identified as infringers by other trademark owners. Failed applications are advertised in the public domain as are infringement cases. Companies may suffer long term damage to their reputations and brand integrity as a result of an incomplete search and consequential infringement claim for criminal damage.

Supply Chain Problems

The risks are further increased by graphic designers and marketing agencies who create and sell brand names and logos without a complete EU and UK IPO search. Over 200,000 UK agencies are not fully trained nor use qualified IP advisors to conduct searches. Equally domain name sellers also fail to conduct due diligence IPO search checks before selling domain names. Buyers of these services often buy designs and names which are already trademarked and the property of third parties. The sellers suffer no risk as, in law, it is the users who infringe and can be sued.

Search Fees

Qualified trademark and design agent fees vary and quotes should be obtained for not only the full searches on UK and EU databases but also the follow-up fees for handling subsequent IPO documentation and possible objections. Some law firms charge over £1000 for this service. Buyers should also check the qualifications, experience and client feedback on the person undertaking the search. This is a critical activity for a business owner.

The standard search fee by Clive Bonny at Strategic Management Partners “SMP” is £100 plus vat. This includes searches on UK and EU IPO word and design databases for similar registered trademarks, searches on Google for similar trademarks, and searching Companies House for active and dormant traders with unregistered trademarks.

Clive is a certified IP advisor, a Fellow of the Institute of Patentees and Inventors, member of the Authors Licencing and Copyright Society, and has provided consultancy and design services to the UK IPO who also list him as a qualified mediator to resolve IP disputes at low cost. Clive founded SMP in 1990. SMP’s Industry Award recognitions include  2014 Top 50 UK Advisor by Enterprise Nation; 2016 Emerging Technology and Innovation Award by Corporate Vision; 2017 Risk and Reputation Management Award by TMT Media; 2018 Mediator of the Year and Technology Award by Corporate Livewire; 2019 Sustainable Design Award by Futurebuild; 2020 Awards for Most Innovative Sustainable Partnership by Homebuilder and Most Innovative Reduced Cost Consultancy by Global 100.

SMP offers a free IP review at  https://consult-smp.com/check-invest/ip-asset-review

SMP offers free online IP tuition at https://consult-smp.com/key-services

SMP provides case studies and news https://consult-smp.com/archive/category/ip-protection

for a free informal discussion contact Clive@consult-smp.com tele 01273 308865