Josiah Hincks Intellectual Property Solicitors can help your business to protect its intellectual property, from registration of trademarks, to stopping another from using your brand. Our specialist intellectual property solicitors in Leicester will provide expert advice, excellent service and good value.
Our Intellectual Property Team
How we can help
Intellectual Property (“IP”) Law protects the expression of an idea; this includes matters such as copyright (written words), trade marks (branding and logos) and patents (mechanical parts / inventions).
At Josiah Hincks there are a number of different service that we offer to help protect your IP, these include (but not limited to):
- Copyright protection;
- Copyright infringement;
- Design rights;
- Licensing IP and Licence Agreements;
- Non-disclosure agreements;
- Passing off;
- Patent infringement;
- Trade mark applications; and
- Trade mark infringement.
Our Intellectual Property Solicitors Leicester can help your business register its intellectual property and thereafter protect the assets from being used without permission. We can assist with UK registrations, European Registrations or even worldwide registration to protect your valuable intellectual property worldwide.
Copyright protects literary, musical, dramatic, artistic and broadcast works. Provided the works you have created are original and you have recorded your works, copyright will automatically exist.
Whilst the works created must emanate from you (the author) there is no requirement for the works to be unique i.e. it is possible for two separate works to be created that are the same or similar.
Copyright Registration Service
As copyright solicitors in Leicester, we are often asked to provide a Copyright Registration Service. This is where we create a legally recognisable proof of date of copyright. As copyright is created automatically and there is no need or ability to register your copyrighted works, our Copyright Registration Service gives you the peace of mind that your copyright be be proven to a specific date. Accordingly, if you ever need to enforce your rights under your copyright, you can easily demonstrate when your use of the works was first made.
At Josiah Hincks we can advise you if your works are capable of being subject to copyright, we can provide you with services to help protect your works and we can help enforce your copyright if someone has copied your works.
Josiah Hincks Solicitors can help you to register a trademark. Our trademark solicitors in Leicester can give advice on the likelihood of registering a specific trademark and prepare all the required Intellectual Property Office forms to allow your trademark to be registered.
It is common for trade marks to be a mixture of a business name and logo (i.e. a businesses brand). Technically speaking, a trade mark is a sign that is capable of distinguishing the goods and services of one business from another.
To register a trade mark an application must be made to the Intellectual Property Office (“IPO”). The application must be accompanied by a copy of the mark that is to be protected (or a description) and the applicant must state which of the 40 classifications it is to be registered against i.e. which goods and services the mark will be used against (e.g. professional services, trades, etc). Our trademark solicitors can advise on the correct trademark classes in which to register your trademark.
There are a number of rules that dictate whether a mark will be registered or not including whether the mark is purely descriptive, is an indicator of origin or is offensive. Provided the mark meets the requirements of the Trade Marks Act 1994 the IPO will progress your application by advertising the mark in the trade mark journal for a period of 2 months to give other trade mark owners an opportunity to object to the mark. Provided no one objects to the mark, the IPO will issue a certificate and register the mark.
The entire process takes around 3 months before a mark is registered.
At Josiah Hincks we can advise you on whether your mark may be capable of registration, we can draft the application to the trade mark office and we can advise on any changes that may need to be made to help the mark get registered. We offer fixed fee trademark registration by our expert trademark solicitors.
In addition, if you have a trade mark and another business is using your trade mark without consent we can take the necessary action to help protect your business, this may include an application for injunctive relief to prevent the infringer from using your mark and a claim for damages to compensate you for any losses you or your business have suffered.
We offer a fixed fee trademark service, just ask for more details.
A trademark is a “brand” for any business, although it could be for its products or services, or the business name or identity itself. For some businesses, the Brand is highly valuable and it can be a deciding factor for people to purchase.
As the Government website IPO.GOV.UK says:
“When you register your trade mark, you’ll be able to:
- take legal action against anyone who uses your brand without your permission, including counterfeiters
- put the ® symbol next to your brand – to show that it’s yours and warn others against using it
- sell and license your brand”
There are lots of rules about trademark registration, so rather than waste time and energy, you would be well advised to instruct a trademark solicitor to carry out the registration for you.
Any trade mark must be unique. It can include:
- a combination of any of these
Your trade mark can’t:
- be offensive, eg contain swear words or pornographic images
- describe the goods or services it will relate to, eg the word ‘cotton’ can’t be a trade mark for a cotton textile company
- be misleading, eg use the word ‘organic’ for goods that aren’t organic
- be a 3-dimensional shape associated with your trade mark, eg use the shape of an egg for eggs
- be too common and non-distinctive, eg be a simple statement like ‘we lead the way’
- look too similar to state symbols like flags or hallmarks,
If you ask our solicitors to register a trademark, then we will:
- Carry out a search to ensure your trade mark will not infringe another
- Consider whether it is likely to be registerable in accordance with the Trade Marks Act 1994
- Consider which classifications (classes) to register your trademark
- Prepare the application and submit it with the Intellectual Property Office directly
- Once published, store your Registration Certificate for no additional charge.
A trademark can be a logo or a word. If you want full protection and your logo has words on too, we recommend you make two applications for complete protection.
Our Intellectual Property Solicitors in Leicester are regularly instructed to bring or defend trademark and passing off disputes. It is a specialist area, and therefore it would be unwise simply to contact a standard civil litigation dispute resolution solicitor. It is likely that any trademark or passing of litigation will be reasonably high value, may require urgent advice and injunction proceedings and will require good knowledge of trademark law.
There are two stages to trademark disputes. 1) Opposition to Trademark Registration and 2) trademark infringement litigation.
If you already have a registered trademark, then if someone registers something similar, then often the IPO will notify you as brand owner. However this is not guaranteed. You should therefore be aware if someone does seek to register a mark similar to yours. Equally, you might be trying to register a mark and find out that there is already something similar.
As a trademark opposition solicitor Josiah Hincks can help you oppose Trademarks prior to registration by the Intellectual Property Office. We can prepare all of the necessary forms (TM7 etc) and legal submissions required for the IPO tribunal to decide what to do. There are strict time limits on opposing a trademark, so your solicitor will need to know what they are doing, in order to be successful.
The second stage will be trademark litigation. Our solicitors often conduct trademark dispute cases in the IPEC Court (Intellectual Property and Enterprise Court) as the judges are much more savvy and knowledgeable about trademark law than Judges in a local County Court.
Trademark Litigation and Passing Off disputes are highly complex and require a detailed knowledge and experience of trademark law and passing off law.
Trademark Law stems from the Trade Mark Act 1994, along with case law. Section 14 Trade Mark Act 1994 allows for claims to be brought for trademark infringement and allows you to claim for damages, injunctions, accounts of profits etc. Section 10 Trade Mark Act 1994 sets out what infringement of a trademark means. It can be:
- Using the actual registered trade mark in an identical way
- Using an identical sign (trademark) to promote similar goods/services
- Using a similar trademark on identical goods
- Using identical/similar mark in a different classification, where the trademark has a reputation
As you can see, Trademark Law is complicated and so if you are involved in any kind of trademark dispute, then please contact me for advice.
Supplementary to Trade Mark Infringement Disputes is Passing Off and Passing Off Disputes.
Passing Off is a tortious claim (Law of Torts). In brief, it is where someone uses a Mark (registered or unregistered trade marks) to pretend to be, or sell off the back of, another business’s brand. Passing off requires three things (called the classic trinity test):
- Goodwill – The infringed mark must have a reputation and goodwill attached – does the public look at the mark and identify who the brand owner is?
- Misrepresentation – the Defendant must have confused the public to believe that his goods were actually the trademark owners goods
- Damage – has the trademark owner suffered damage as a result
In the case of passing off the following remedies are available:
- Damages or an account of the defendant’s profits
- An order for the delivery up or the destruction of the infringing articles or products
- An injunction
- An enquiry to establish loss
The following can be used as defences against a claim of passing off:
- The claimants mark, slogan etc is not distinctive
- The mark, slogan etc has become generic
- The defendant may be innocently using his or her own name
- The claimant has given consent
Our Intellectual Property Solicitors offer expert advice in this area
The American’s call these letters “cease and desist” letters. We don’t in the UK, we simply call them letters of claim or more accurately letters before action. As intellectual property disputes solicitors, our lawyers write or respond to many of these letters every year.
The Law says that if you threaten legal action and its unwarranted, you can be held liable for costs. So always think before you act.
Our letters will set out exactly what your trademark is, what the infringement is (linking it to the correct law), consider passing off, state what damages you are suffering and demand that they stop immediately. We will often require the defendant to enter into an agreement, also referred to as Undertakings, to confirm in a contract that they will stop and not infringe your trademark again.
Alternatively, you may have received a letter re trademark infringement / passing off, and need to defend your business. Again, our intellectual property solicitors can help.
Why choose our Intellectual Property lawyers?
Why choose us?
We recognise that a large proportion of our work comes from recommendations and satisfied clients therefore for our aim is to give the maximum level of added value service at competitive rates. We accept we may not be the cheapest but we pride ourselves on the quality of service.
We provide clear and concise advice and ensure you are kept fully appraised throughout the transaction. 98% of our clients would recommend Josiah Hincks to friends, family and contacts.
In 2018 Josiah Hincks was recognised by the Leicestershire Law Society as Small Law Firm of the year 2018. This award reflects the excellent service our staff offer its clients and brings assurance to those clients working with us that we strive for excellence in all we do.