On the 21st of Feb 2012 our Trademark application was accepted for the word Evolution and Evolution Design in classes 16 and 42 and we may use the ® symbol anywhere in the European Union. This application was made successfully on our behalf by Alastair Hume, Trade Mark Attorney at Ancient Hume (www.ancienthume.co.uk). And it followed this process outlined below.
What stopped us from registering previously? Around 10 years previously we had made enquiries about trademarking our name but found it to be too costly, complicated and slow and with a high chance of failure as we had also found there to be 9 abandoned applications which led us to believe that at that time it was not possible without receiving objections from existing trade mark owners in this area one of whom was BT. This was the view at that time of two legal firms in Edinburgh.
If you want to consider trademarking your own name or logo you can search for these yourself at www.ipo.gov.uk and it is worth looking yourself at the outset, but after going through the process we would now thoroughly recommend using a specialist trade mark attorney.
Trademark registration today – the process is now faster and simplified and due to this we had a much higher chance of success with fewer objections, which are not necessarily the end of the application. However Ancient Hume handled these and the whole process for us. Before launching into any trademark searches we had a discussion about our business, our services (the full list is actually quite long) and any future services that might have an effect on our application and on the likely effect that could have on existing trademark holders whose property we were keen not to encroach upon.
So the skill that a trade mark attorney has it to know what to search for not just where and then frame up an application to ensure that your mark registration covers all that you want and need in terms of safeguarding your assets while being acceptable to existing trademark holders in the same or similar area’s to you, to reduce the chances of objections which saves time and a great deal of costs and even the chance of having your application blocked entirely.
Why we had to register our trademark now? In our case we wanted to own the trademark and guarantee the legal protection that it offers to safeguard the brand that we have spent 20 years in building and to ensure that others do not abuse it or add confusion to the marketplace, especially online where actual geography is less vital and where domain names are still easy to get as so many variants are available to register in the UK through Nominet (www.nominet.org.uk) no questions asked and even more so abroad. Protection was and remains our only objective. Read on to find out why this became an imperative for us. Prior to that, due the low likelihood of success and partly down to cost with no guarantee. That was a very false economy. The reason that we took a fresh look at trademarking was that in 2011 a price driven competitor open here in Edinburgh with the same name as well as trading online which caused confusion particularly on Google. Odd that we spend our working lives helping clients to differentiate them from competitors and stand out. So we were taken by surprise that any design company would open in Edinburgh with the same name selling the same website design services. The company was registered as Evolution Online Limited trading as Evolution Websites and Evolution SEO. A polite request for them to change name was rebuffed and any prior knowledge of us was denied, odd as we were page 1 position 8 on Google for the search term ‘web design company Edinburgh’ which seems a fairly obvious search term to use when naming a website design company, under the terms ‘Evolution website design’ we were page 1 positions 1, 3 and 4 many of the other results were indirect links to us from directory listings etc. After seeking legal advice we decided to register the trademark which was successful, but took some months during which we felt that our business brand and turnover were being harmed, so we also accepted the our lawyers advice to use the courts through a Passing Off action. This proved to be unsuccessful as an Interim Interdict application failed and then Evolution Online Ltd was placed into liquidation by HMRC before the full case could be heard a few days after the trademark application came through. All in all it was a very costly and distracting time for us. The cost of the trademark was an investment. The cost of the Passing Off action and subsequent Interim Interdict was a risk that in hindsight we would not have taken again. Two of the Directors of Evolution Online Limited (Company No. SC390415) were also Directors of a failed website design company called Moovin On Up (Company No. SC306027) which was also forced into liquidation by HMRC. Another website design company trading as a separate new legal entity operates from the same offices. Two of the directors are the same ones that previously ran EOL and MOU. However we wont name them here. Anyone can check on these things at: Companies House webcheck Buyer beware is all we would say. The domain name that we were most unhappy with was www.evolution-websites.co.uk and is still live forwarding to a new website, even though that is covered by the Trademark.
If we had held the trademark before this competitor chose to use a similar name then a simple ‘Cease and Desist’ letter may have been sufficient to them to stop using our name. If ignored then a court injunction would have forced the issue. However without that legal protection we were vulnerable. In these times you find out that you actually get no help from the bodies that you assume were set up to assist. Both Trading Standards and Companies House admitted to being powerless to help us, telling us to use the courts at our own expense. Nominet who look after .co.uk domain names offered us their free arbitration which is voluntary and if the other side ignores it you can take action but at an upfront cost of £3,000. The domain name that we most objected to was evolution-websites.co.uk not one of the many ‘Evolution’ domain names in our portfolio. The official liquidator even refused our cash offer for that domain name as it may or may not have even been one of the failed company assets, as it was registered by one of the directors not the company which is often quite normal. They still own it and it points to the new company website so they clearly are intent on getting and remaining rank and link value as possible even as it was for a failed company.
Now we own the trademark for Evolution and Evolution Design and hope that adds value to our business as well as legal protection.
Trademark registration procedure after searching existing marks:
- Submit Application; under the class or classes (to see these the lists visit http://www.ipo.gov.uk/types/tm/t-applying/t-class.htm) made as above aimed at avoiding conflict with existing marks if applicable.
- An official application filing receipt is issued within a week of filing. The application is examined on absolute grounds to determine the registrability of the mark. Usually the reports are issued quite quickly often within about 4 weeks.
- The Examiner will also carry out their own search for earlier trade mark applications or registrations which are similar and protect the same or similar goods or services. This report is for the Applicant’s information. The application will not be refused even if there is an identical mark for identical goods. If there are any earlier marks which the Examiner considers to be similar there is an opportunity to discuss and attempt to persuade the Examiner that the marks and/or the goods/services are not similar.
- The Examiner will notify the owner of any similar UK (or International Registrations effective in the UK) when the application is published. The owners of CTM registrations or International Registrations which designate the EU will not be notified by the Examiner unless they have opted in to the UK Registrar’s notification system. The onus is on the owner of an earlier right to oppose the application when published.
- The application (when accepted) is published in the trade marks journal. It is open for opposition for an initial period of 2 months from the publication date. Anyone considering opposing the application may apply to extend the opposition period by a third (final) month.
- If the opposition period is not extended and the application is not opposed the mark will be registered about 10 weeks from the publication date.
-The registration certificate will issue a few weeks later.
It is possible to secure registration in about 3 months in some cases but the process takes about 4 to 6 months on average. Objections can add a significant time to the application process, hence the need to frame the application with care and caution.
The trade mark registration lasts for a period of ten years from the filing date. In our case we filed on 19th September and several concerns and objections made by the Examiner at the Intellectual Property Office were discussed addressed and amended by Ancient Hume before the application appeared in the trade mark journal on 2nd December 2011. As there were no objections the application was granted on 21st of Feb 2012 so our ten years expires on 20th February 2022, a date that is in our diary.
1. The word trademark is often spelt using two words trade & mark, in the UK we say Trade Mark Attorney. Trademark is American, we cannot find a definitive.
2. The directors of Evolution Online Ltd have since re-launched with a newly named company and as long as they do not abuse our trademark we have no issue with them. We won’t name them here.
3. Having the trademark is not the end, you need to protect it too.
4. Link to our branding page where we state our offer to assign copyright to our Clients not
everyone does this. http://www.evolution-design.co.uk/branding.htm
However even if you do register your trademark, this can happen to you:
Goliath versus David being a small coffee vendor in Bangkok, Thailand. Using a green & white round sign bearing the name Starbung Coffee and depicting a Muslim man with crescent moons on the side. According to owner his logo was not copied from Seattle but inspired by Islam. Hard to argue against in the court of public opinion, in the law court he did not have a leg to stand on. But his legal case with Starbucks brought him local fame and publicity, which has been good for his business.
Courtesy of Morton Fraser blog including such classic as; a). I’ve already secured protection for my brand by registering it as a company name or domain name …. oh really? And b). There is no need to go to the expense of registering a trade mark – the mark will be protected by copyright for free …. oh please tell me more? See the full Top Ten here > Top 10 Trademark Myths