Advice for Commencing the Use of a Trademark

If you use or are about to commence use of a Trademark in the UK, be it an invented word, logo or slogan, then it should be protected via Trademark Registration. I would advise a trademark attorney to ensure that you maximise the protection available for your brand name and step you through the registration procedure.

Imagine that dreaded scenario, whereby you are forced to stop using your Trademark because it infringes somebody else’s prior rights, forcing you to incur the considerable cost and inconvenience of rebranding, along with possible legal action. To protect against such a situation, a trademark attorney should encourage you to conduct Trademark searches to try and uncover conflicting rights at an early stage and also, to register your Trademark.

Although rights accrue in a Trademark by virtue of its use, the level of use required in the UK to substantiate a Passing Off claim is considerable, often requiring a number of years use and associated advertising. Also, the burden of proof is onerous and costly to compile. In contrast, rights arise from a Trademark Registration immediately and constitute prima facie evidence of ownership.

Trademark Registration enables you to prevent unauthorized third party use of an identical or confusingly similar Trademark in relation to overlapping or related goods or services and also, to preserve against somebody else seeking to stop continued use of your Trademark. For example, if a third party obtains a UK Trademark Registration and you do not, unless you are able to defend your position by asserting prior passing off rights, the “tables can be turned” and use of your Trademark prevented.

In order to commence the Trademark searching and registration process, allow your trademark lawyer to have a list of your proposed Trademarks and a note of the goods or services that you wish to use them in relation to and they should be able to conduct complementary searches in-house for identical Trademarks. If this initial search is favourable, they can then discuss with you whether you wish to conduct more detailed full clearance searches for confusingly similar Trademarks and file your Trademark Application.