Trademark enquriy

pastorbarrett

Hi all,

I'm a sole trader but am looking to protect the brand/ products I have. Do I need to protect my trading or 'company' name, and then each accompanying product separately? Basically just wondering if I've to fork out cash multiple times...

Many Thanks.

pedronomix

What makes you think you need to protect them, if you are using a business name you are legally obliged to register it with the CRO. You can claim TM on your unique product names at no cost!

Voltex

OP..Trademark process is a nightmare and potentially drags on for years. Unless you are 100% committed and confident of your product/trademark the only people who will benefit are the lawyers. I registered a trademark in 2012 and have only just reached the final agreement in September (and its cost about 20K). BTW if you do go ahead with a trade mark registration..never engage with anybody other than the patent lawyer..lots of scams going on out there.

pedronomix

Rather poor post by Voltex who is normally so precise! There are two types of trade mark, registered and unregistered. Registered are a bit like patents in that they are territorially governed and attract lots of fees...... They also cost huge numbers to defend/protect! Unregistered cost nada and if infringed are cheaper to defend as it can be done by non-specialist lawyers as it is simple "passing off" QED!

Voltex

pedronomix wrote: »

Rather poor post by Voltex who is normally so precise! There are two types of trade mark, registered and unregistered. Registered are a bit like patents in that they are territorially governed and attract lots of fees...... They also cost huge numbers to defend/protect! Unregistered cost nada and if infringed are cheaper to defend as it can be done by non-specialist lawyers as it is simple "passing off" QED!

But the pre-reqs to protecting unregistered marks is based on case law and requires the product or service be traditionally or historically associated with the plaintiff.

I suppose, in the mind of a manager or business owner, the motivation to pursue a trade mark registration of either type is probably contingent on the dynamics of the industry they are in, the resources and capabilities of the business and its owners and the uniqueness and ease of imitation of the product itself.

EIREX

This can be a very long and expensive process. Only go into it if your trademarks are really important and valuable.

pedronomix

We are talking about an Irish sole trader here and the unregistered trade mark has equal validity to the registered version. The only real reason to register is to add it to the asset register..... Defence costs are about the same but unlikely to affordable by the OP! Going the cheap route still entitles him to send the auld "cease and desist" frightner!

pedronomix

Having sold both registered and unregistered types, I know that the value is dictated by the actual trade volumes attributable... nothing else, unless you happen to own a name that some body corporate wishes to own/extinguish !

antoinolachtnai

If you want to register a trademark in Ireland, it is just not that expensive or complex. The EU is a bit more complicated.

This is a summary with costs. Note that there are going to be professional fees in addition unless you do it all yourself.

http://www.cai.ie/?page_id=15

These costs do multiply if you've got multiple trademarks. You are protecting the trademarks, not the company, to answer the OP's question.

Pedronomix is wrong about the value of registering a trademark. A passing off action will of its nature be much more complex and expensive than a trademark action. There is no such thing as a simple 'passing off' action. You will need better lawyers and a lot more paperwork because the issue is not the use of words or symbols which is pretty simple to deal with, but the beliefs of consumers and the intent of the defendants, which is highly subjective. As a result, passing off is just hard to prove whilst trademark infringement is relatively easy.

It is true that it costs real money to defend a trademark and I have been there and done that in the past. It basically depends on the value of your business whether and how you deal with this if it arises. If your business's goodwill isn't worth twenty grand, then you obviously shouldn't spend the twenty grand (or whatever the solicitors advise) that it costs to defend it.

How much should you spend on registration? It basically depends on the nature of your business and the scale. If you are basically a local service/reseller business with local customers, and your EBITDA is below 100,000 euros, this is certainly a 'nice to have'. You probably don't need to worry about this. If you sell a product through resellers, or have people coming from a distance to your location, so you are a regional or national business, or if you are considering opening a secondary location, I would say you should invest in trademarks. If you are trading abroad and/or on the Internet you should plan to invest in trademarks at some point. If your EBITDA is above 500,000 euros you should definitely invest in trademarks.

The OP sounds like he is in the product game (rather than service) so I think it is well worth his while investing in trademarks. The reason is that it is very easy to have your goodwill usurped in the product business, compared to the service business. I would advise him to talk to the local enterprise office or enterprise ireland and see what they have to say on the subject. It is worth an exploratory talk with an experienced person.

I can recommend a trademark attorney/solicitor who is a straight talker, if the OP (or anybody else) is looking for one.

Typical things I have seen:

I am familiar with a case where a competitor registered as a trademark the business name of a new competitor in their market. The new entrant hadn't registered it, because they were a bit short of money on the day they went to the trademark attorneys. Now the whole thing has to be undone, and there are lawyer fees all over the shop. This involved service industry companies of national scope whose names you would recognise.

Certain fields have special problems. Coming up with good trademarks (registered or unregistered) for financial products and companies is a big pain, for instance. Just about everything you can think of that isn't a family name or totally generic has been registered as a community trade mark, so if you go into business with one of those names you will be infringing and could find yourself being forced to change the name down the road.

pedronomix

The key points for the OP here are: has he a valuable brand that justifies to expense to protect versus the commercial returns and likelihood of serious infringement?
To have registered protection in many jurisdictions it is necessary to prove actual use by the holder in those markets. Of course registered trade marks have an important place for valuable brands in which much investment has been made.
It is unlikely that a sole trader is actually in this space.

Both registered and unregistered trade marks establish ownership, only valuable ones would be worth full on legal action to take on infringement. In my real world experience, most infringers are small operators who are trying it on and run when challenged by the initial well worded cease and desist letter.

Brand protection is rather like insurance cover, you can get it for even the most unlikely occurances but is the cost involved likely to be justified commercially?

antoinolachtnai

For sure, it all depends, you can certainly argue that.

The other side of it is that if it isn't worth investing less than the price of a dishwasher in national trademark protection, is it really worth being in the business at all?

The OP is reinvesting all his profits in building up a reputation for a line of products. This is effectively all his savings. If a big player comes in and names some products the same as his and goes to the OP's resellers with keen pricing, then he is pretty much out of business and has lost everything he has worked for.

At least the registered trademark gives some sort of protection. It might give some leverage in buyout talks.

It's a matter of planning and looking at the overall situation. We don't really know enough to say what the OP should do.

pedronomix

A sole trader with proprietory products is perhaps an unlikely scenario. If this is the case then some brand protection is clearly appropriate. Unclear, from the information posted , as to whether registered trade marks are justifiable.
The information sought on business name protection is a hint as to OP's depth of commercial sophistication.
I note no further engagement from the OP on the topic so far!