Owners often assume that long use, and customer recognition, gives them the name automatically. It does not. The earlier application is examined first, and once someone else holds the registration the earlier user can be stopped from using the name they built.
Registration does not cover every product automatically. It covers the classes and the specification set out in the application. Too narrow a specification lets a competitor use the same name on other goods; too wide a one can be cancelled later for the parts never used.
We handle clearance searches, the application, submissions to the registrar, and proceedings against infringers.
What we do
- Search for identical and similar marks already registered, before a name is adopted.
- Advise whether the proposed mark is distinctive enough, since words that directly describe the goods are usually not registrable.
- Set the classes and specification to cover what the business does and where it will expand.
- File the application and see it through to conclusion.
- Respond and appeal where the registrar objects or requires amendment.
- Oppose applications by others that are identical or similar.
- Keep renewal dates, and record assignments and licences.
- Bring civil and criminal proceedings against infringers.
Before adopting a name or mark
- Search first for identical or similar registrations in the same class of goods.
- Choose something distinctive, not a word that describes the product.
- File before launch, not after the product has become known.
- Register in the name of the operating company, not an individual, which causes problems when shareholders change.
- Consider filing in the countries you will export to — a Thai registration has effect only in Thailand.
When someone else is using your mark
- Preserve the evidence before alerting them: images of the goods, the online listing, a receipt for a sample purchase, and the date found.
- Send a cease and desist notice, which resolves many matters without proceedings.
- Notify the online marketplace to have the listing removed, which is faster than court.
- Bring civil proceedings for damages, and criminal proceedings for counterfeiting or imitation of a registered mark.
This page is general information, not advice on your situation. Whether a mark can be registered depends on a search in each case and on the registrar's discretion.