Large firm of Trade mark attorneys or small firms of trade mark attorneys: that is the question

As the owner of a small firm of trade mark attorneys I am often asked the above question by potential clients. They find my details online or via twitter and are unsure whether to use the small firm or the large firm. The advantages of using the large firm are well known and rehearsed: first, they are established and have a reputation; second, they claim to have expertise in the field; third, they claim to have worked and continue to work with top companies.

So why should small and medium sized companies not use the large firms? I hear you ask. From having worked in large and small firms, I think that the small firm gives clients a more personalized service. They do use templates, or standard form but research your needs and come up with solutions that are right for you. Let’s say for example that you are a clothing company who is seeking advice registering their trade marks. A large company will normally use its standard list of goods and charge you exaggerated fees to protect your brand. The small firms will take time to research the services you offer and draft an application that covers all your needs.

Second, and importantly, price is a huge concern for small companies in the UK. Particularly in these times of austerity where businesses are carefully managing their budgets. Before writing this article I approached five firms of trade mark attorneys and asked them to provide me a quote for registering a trade mark in 3 classes. 

This are the responses that I received:

1.       Company number 1 quoted £650 (+VAT)

2.       Company number 2 quoted £1090

3.       Company number 3 quoted £721 for filing & £300 for prosecuting the application (total £1021)

4.       Company number 4 quoted £1138 (+VAT)

5.       Company number 5 quoted £800 (+VAT)

6.       King’s & Bailey quote for doing the same work is £550.

You can verify this result for yourself. Write to a few firms before deciding on which one to use. Why should you pay more for the same work? We do not have the same overheads (i.e. expensive City Offices, expensive lawyers etc) but we offer the same service at an affordable price. So choose King’s & Bailey for your trade mark, design and copyright needs.

 

© King’s & Bailey 2013

 UK Trade Mark Registration Process

Registering a trade mark is the best way to protect your brand. A registration is beneficial for the following reasons:
  • Registrants are given certain exclusive rights to use a particular sign in relation to specified goods or services
  • Traders can start protecting their brand before goods are put on the market
  • Once registered there is a legal presumption that the registration is valid
  • A registration reduces the possibility of disputes because other traders can be certain of your rights

UK Trade Mark Applications 

It is widely reported that small businesses (unlike big businesses) are famous for not protecting their trade marks and designs when they begin using the mark or designs. This is mostly because of the wrongly held belief that protecting trade marks is costly and unnecessary. However, this is not the case, it cost more to rebrand later on. In a recently published article on BBC News a hotel owner was forced to change the name
that he had been using on his business since 1930 (http://www.bbc.co.uk/news/uk-england-northamptonshire-20767044) and a local gym was forced to rebrand by another company and the legal bill spiralled to £50K (http://www.northwichguardian.co.uk/news/9571780
). A registration is cheaper than litigation, and it is the best way to protect your mark. 

 

 International Registration

An International Application (IR) facilitates the acquisition of national marks. For example you can have an UK Application but your business is doing well and you are exporting to the US, China or Japan. In light of this fact, you would like to obtain protection for your marks in these countries. We can use your UK Application as a basis for the IR and file new applications in those countries. The IR system is more cost effective than filing national applications in the respective countries. 


Last call for drinks on Anheuser-Busch, Inc. v Budějovický Budvar

Today’s case is about a drink which is considered to be the third most popular drink after water and tea, and that of course is beer, a drink which is so delicious that the White House has decided to start brewing its own version of this beverage. Our case concerns another American household name – BudweiserTo understand this complicated case one must remember that this case is just a drop in the ocean of litigation between these two parties:  Anheuser-Busch, Inc. v Budějovický Budvar.


This particular case started in 1996 when Anheuser Busch filed four Community Trade Mark Applications: one for a figurative mark and three for the word mark BUD, for goods and services including beer and alcoholic beverages. The Applications were opposed by Budějovický Budvar, a Czech brewer of beer. Budějovický Budvar’s opposition was based on a figurative BUD mark, and an appellation of origin for BUD valid in various European countries. The appellation of origin for BUD derived from the Lisbon Agreement and a bilateral convention valid in Austria.


Essex shop owner forced to change his chippy’s name from SCOOBY SNAX to Johnny Mac’s New Place

In March 2010 John McNeill filed two trade mark applications to register the mark SCOOBY SNAX for restaurant services.

Lawyers representing Warner Bros sent various letters to the applicant asking him to withdraw his applications and stop trading as SCOOBY SNAX.

Facing an expensive legal battle against a multi-million pound company the applicant decided to spend £20k rebranding his 8-years-old business.  

Comments

This case clearly evidences the need to protect one’s trade mark before launching one’s business or immediately after launching the business. As can be seen in the article, the applicant waited eight years before filing the applications. By this time he probably had spent money in advertising and branding,  just to be told down the line that he cannot use the mark.

Secondly, this case also shows the need to conduct thorough checks of the register before filing the application or starting to use a name. Applicants need to know if the name that they have chosen is identical or similar to a mark which is pending registration, has been registered or is a well-known mark.

Small businesses cannot afford to make mistakes like the one evidenced here because they can costly – in this case over £20k. Clearing the mark before use is essential. It is better to spent money and pick up a mark that can be registered ab initio (from the beginning) rather than taking the risks that the applicant took in this case. 


King’s and Bailey IP Specialists, 8 January 2013 ©