Baron Warren Redfern

In a world driven by image and reputation, nothing is more important than protecting your name.

At Baron Warren Redfern we provide the full range of trade mark services including: filing and prosecuting trade mark applications in the UK, the EU and around the world, handling oppositions and invalidation or revocation actions against the trade mark applications and registration of trade mark, enforcing our clients’ trade mark rights against infringers and counterfeiters, and defending legal actions brought against our clients.

Another of our core disciplines is dealing with internet domain name issues and disputes.

Additionally, we provide support services such as trade mark clearance searching, watching services and trade mark renewals. We are not a creative consultancy, but we can also help you with your brand creation and strategy, in particular to avoid possible future legal issues.

What is a Trade Mark?

Trade Marks are indicators of origin, and can be any sign which differentiates the goods or services of one trader from those of another.

At a basic level they simply allow customers to differentiate goods or services from one another, so they can choose the one they want. However, if you promote your Trade Mark and use it to offer high quality goods or services, then over time it builds a reputation and starts to attract customer loyalty. When that happens Trade Marks evolve into a great deal more than just name tags. They become enticing indicators of quality, which represent all your efforts to develop great goods or services, and sit at the vanguard of all the marketing you do. With so much hanging on your trade mark it is vital to make it yours and yours alone.

Trade Mark Applications

The best way to protect a mark against being copied by others is to obtain a trade mark registration for it, for which it is necessary to go through a trademark application process.

The Trade Mark must be distinctive for the goods or services in question, and the owners of earlier identical or similar rights must not object. If so, the trademark application process can be relatively short one, but if a dispute arises then it can be a difficult and complex procedure. This is where having a good Trade Mark Attorney is essential, to give yourself the best chance of a favourable outcome.

To be registerable a mark must be capable of being a badge of origin, and it must also be distinctive for the goods or services. Marks which describe a product or a service, or a characteristic thereof, can fail this test. The law in this area is complex and constantly evolving, but as we deal with it on a daily basis we are well equipped to advise on the likelihood or otherwise of a mark becoming registered, and to deal with objections raised by Trade Mark examiners.

The owners of earlier identical or confusably similar marks which are already registered can act to prevent you registering your mark by filing an opposition. Such conflicts are common and can be dealt with in various ways. Having a good Trade Mark Attorney to represent you in an opposition is very important to ensure you get the best result.

At Baron Warren Redfern we handle Trade Mark applications for famous brand owners as well as SMEs and start-ups, both here in the UK, in the EU, and further afield. With our expertise you can be sure of the best result in any trademark application.

Trade Mark Costs

There are various possible costs associated with registering and enforcing your Trade Mark rights, and these largely depend on the nature of any difficulties encountered. However, in most cases, the importance of maintaining your exclusive brand will more than merit the expenditure incurred.

Trade Mark applications are relatively inexpensive if the mark is distinctive for the goods or services, and no third parties object. In such situations, the greatest determining factor for the costs is the geographic coverage required. The cost of a straightforward application to register a mark for one class of goods or services in the UK is affordable for any brand owner. A European Community Trade Mark application to cover the whole of the EU costs more than twice as much, but it is still cost-effective, especially when you consider that it provides protection in all 27 member states. If protection is required in the US, China, Japan, India and so on, then the costs will be greater. However, the cost of filing abroad can be minimised by using the International Registration (Madrid Protocol) system as it cuts out the need for local attorneys at the filing stage. Our clients are advised of such foreign costs when they consult with us on their choices, and if you would like to know more then please contact us.

If any Trade Mark application encounters difficulties, such as official objections or third-party oppositions, then the costs will rise. However, we always work closely with our clients to ensure they are fully advised of the likely outcome in any situation, so they can make an informed decision on whether it is worth incurring such costs.

The costs associated with enforcing Trade Mark rights against infringers, or opposing new Trade Mark applications for marks which are identical or confusably similar to yours, vary enormously. In some cases, simple communication with the other side achieves the desired result, while in others it is necessary to take more serious legal action. The most important thing is to ensure that the expenditure is cost-effective and worthwhile for you and your business. At Baron Warren Redfern we are fortunate to represent both big brand owners as well as SMEs and start-ups, so our Trade Mark Attorneys are well placed to give you the best strategic advice when it comes to achieving value for money in any particular situation.

If you want to know more about the costs of dealing with any Trade Mark matter you have, please contact us and we will be pleased to help.

Foreign Trade Marks

Trade Mark registrations only protect marks in the territory where they are granted. A UK registration will only protect a mark here, and in order to obtain protection beyond these shores, further applications must be filed in the territories required.

In some cases foreign countries can be grouped together, for example in the EU, where it is possible to obtain a single unitary registration. As European Trade Mark Attorneys we handle such applications on a large scale. In addition, it is also possible to file International Registration (Madrid Protocol) Trade Mark applications at the World Intellectual Property Organisation in Geneva, which designate particular foreign member states. These are always far more cost effective than filing separately in those states. Again, at Baron Warren Redfern we handle such trademark applications regularly for our clients.

With regard to separate foreign national trademark applications, we have associate agents in every country in the world who handle applications for our clients in their territories when required. We have long-standing working relationships with our foreign agents, and our clients benefit from the advantages this brings. We only use agents whose services we have thoroughly tried and tested, and which have proven to be cost-effective and efficient.

Trade Mark Infringement

Trade Mark registrations exist to prevent others using your brand, or anything confusably similar to it. Access to cost-effective and efficient enforcement services is therefore vital if your trade mark registrations are to serve their purpose.

If someone copies your brand, either intentionally or inadvertently, it can confuse your customers, cost you sales and in the worst cases damage your reputation or dilute your brand. It is the kind of problem which needs to be dealt with quickly and decisively, and we have a lot of experience of doing just that.

In most cases, it does not prove necessary to go to court. If a Trade Mark owner wants to put a stop to an infringer’s activities, in many cases a simple cease and desist letter will achieve the desired result. If not, it may be necessary to begin the initial steps of bringing a Trade Mark infringement action in the Patents County Court or the High Court, which places such pressure on infringers that they often capitulate. The costs of taking such actions are easily within the means of most Trade Mark owners.

Suing for Trade Mark infringement, or threatening to do so, is not the only solution. Instead, revenue can be generated by granting the infringer a Trade Mark licence, or even selling them your brand. Other agreements are also possible, such as amicable co-existence, or a one-off financial settlement. Every situation is different, and it is a question of employing the right strategy to obtain the best result for you.

Sometimes Trade Mark rights are infringed in multiple jurisdictions around the world, and Baron Warren Redfern also has particular experience in coordinating global Trade Mark infringement action through its foreign associates. In particular, we have recent good experience of dealing with brand theft in the Far East. We place great emphasis on ensuring the highest benefit to cost ratio in such circumstances.

At Baron Warren Redfern we have close relationships with various excellent IP litigators whom we use whenever court action proves necessary.

If you would like to know more about enforcing your Trade Mark rights please contact us.

We offer a 1 Hour FREE Consultation to all new clients, to discuss their requirements.

The last decade has seen an unprecedented increase in counterfeit products entering the EU, which has put registered designs at the forefront of the fight to stop them.

We are filing and prosecuting an increasing number of registered design applications for our clients, and more importantly, enforcing them more and more against importers bringing in fakes from the Far East. We also have experience in obtaining similar rights around the world.

What is a Registered Design?

Registered Designs protect the aesthetic appearance of products. They are therefore of most relevance to those who make products in which the value is closely associated with the visual appeal, such as clothing, watches, wallpaper or so on. However, aesthetics can play a role in any product which is seen when it is purchased or used, and if you invest time and effort in the industrial design of your products, then you can protect that with Registered Designs.

Registered Designs actually protect the design as applied to a product, rather than the product itself, and this design can be broken down into different parts, some of which can be the subject of protection while others may not. If an element of a design is dictated by its technical function, or the requirement to fit something else, then it is not protectable. The designer must have had creative freedom. For example, in an alloy car wheel the rim would not be protected because it must be that radius and depth to support the tyre, and the hub would also not be protected because it must be so shaped to fit onto the car. However, the spokes between the hub and the rim are protectable because the designer is free to make them in any shape.

Most products made available on the open market have been the subject of some design work, which at least in part could be protected. As Registered Designs are relatively cheap and easy to obtain, they can provide a good level of protection against the unscrupulous who make fake versions of your products, as well as legitimate rivals who allow the design aesthetic of their products to drift too close to yours.

Applications

The filing and prosecuting of registered design applications, both in the UK and in the EU, is something we do regularly for our clients.

As with all registered rights, it is necessary to go through an application process. It is vital to adopt the right strategy with the images which form the basis for the protection, and that is where the experience of an attorney counts. Registered design applications are not examined on their substantial merits, so any applicant getting the formalities right but the images wrong, could end up without the protection actually required. At Baron Warren Redfern we have experience of obtaining registered designs of all different kinds for our clients, and our approach is tailored by our experience of having to enforce those registrations. We know what works in practice, and what does not.

While registered designs have a clearly defined role, they are often relied upon as a secondary level of protection behind patents, and even trade marks. As such, registered designs are often considered in the context of other IP rights, and at Baron Warren Redfern we ensure that our clients are fully informed of all their different options.

Costs

There are various possible costs associated with registering and enforcing a registered design.

An application for a registered design in any jurisdiction is relatively inexpensive. The total cost in such situations is determined by the geographic coverage required. The cost of an application in the UK is low. A similar application to cover the whole of the EU costs a little over twice as much, but is still very cost-effective. If protection is required in the US, China, Japan, India and so on, then the costs will be greater. Our clients are advised of the costs of applying for protection abroad when they consult with us on their choices, and if you would like to know more then please contact us.

The costs associated with enforcing registered design rights against infringers vary enormously. In some cases simple communication with the other side achieves the desired result, while in others it is necessary to take more serious legal action. The most important thing is to ensure that the expenditure is cost-effective and worthwhile for you and your business. At Baron Warren Redfern we are fortunate to represent both big companies as well as SMEs and start-ups, so our attorneys are well placed to give you the best strategic advice when it comes to achieving value for money in any particular situation.

Foreign

Registered designs only provide protection in the territory where they are granted. A UK registration will only protect a design here, and in order to obtain protection abroad further applications must be filed in the territories required.

In some cases foreign countries can be grouped together, for example in the EU, where it is possible to obtain a single unitary registration. As European Design Attorneys we handle such applications regularly.

With regard to separate foreign national applications we have associate agents in every country in the world who handle applications for our clients in their territories when required. We have long standing working relationships with our foreign agents, and our clients benefit from the advantages this brings. We only use agents whose services we have thoroughly tried and tested, and which have proven to be cost-effective and efficient.

Infringement

Registered designs exist to prevent others copying the design of your product. Access to cost-effective and efficient enforcement services is therefore vital if your registered design is to serve its purpose.

If someone copies the design of your product, either intentionally or inadvertently, it can cause you to lose sales, and in the worst cases damage your reputation by flooding the market with cheap copies. It is the kind of problem which needs to be dealt with quickly and decisively, and we have a lot of experience of doing just that.

In most cases it does not prove necessary to go to court. If a registered design owner wants to put a stop to an infringer’s activities, in many cases a simple cease and desist letter will achieve the desired result. If not, it may be necessary to begin the initial steps of bringing an infringement action in the Patents County Court or the High Court, which places such pressure on infringers that they often capitulate. The costs of taking such initial steps are easily within the means of most registered design owners.

Suing for infringement, or threatening to do so, is not the only solution. Instead revenue can be generated by granting the infringer a licence, or even selling them your registered design. Other agreements are also possible, such as amicable co-existence, or a one-off financial settlement. Every situation is different, and it is a question of employing the right strategy to obtain the best result for you.

We offer a 1 Hour FREE Consultation to all new clients, to discuss their requirements.

In the modern digital age of music and film downloads, and the instant copying and pasting of images from the internet, the dusty old copyright laws have been press ganged into service like never before.

Copyright was never conceived to deal with an age like ours, and it has been the subject of considerable abuse from politicians and the public. However, despite this it is still a valid and sometimes very powerful tool which can be used to protect your work.

We often deal with copyright infringement claims, usually alongside other rights, and we are well equipped to advise you on whether you have a legitimate complaint, and how to progress it.

Please see the various pages in this section for further information.

What is Copyright?

Copyright protects artistic works, such as original books, plays, music, visual art and films. However, because it is so hard to define exactly what qualifies as art, copyright also protects any new work of a non-aesthetic nature, such as design drawings, computer code, client lists and other documents.

Copyright only protects the form of a work, and not the ideas behind it. To infringe the copyright in a book it is necessary to actually use the same wording. If the story is re-written using different words, then the copyright is not infringed. The most common forms of copyright infringement are the unauthorised use of photographs, and of course illegal downloads, where the works are taken in their entirety. However, claims can also relate to counterfeit products in some circumstances, and also to the unauthorised use of visual logos.

It is not necessary to apply for copyright protection in the UK, as instead it simply applies to any new work once it has been recorded in permanent form. It is useful to record the date the work was created in case this must be proved later, which can be achieved by simply dating it, or depositing it with a bank or other organisation which can provide a proof of date.

It is however important to ensure that if you use an outside agency to create a copyright work for you, the ownership is clearly transferred to you by written agreement.

Copyright Infringement

The copyright in a work is infringed if someone copies a substantial part of it. In the case of the unauthorised use of photographs or text, or illegal downloads, the question of infringement can be straightforward if the original work has been copied in full. What is more complex is identifying the culprit and then taking effective action.

Copyright is there to protect your work, but it is up to you to enforce your rights. Therefore access to cost-effective and efficient enforcement services is vital if copyright is to serve its purpose.

Some high profile copyright court cases have attracted attention for their high cost, but it is very rare for claims to go so far. In most copyright infringement situations the infringer capitulates quickly, preventing large costs being incurred. Every situation is different, and it is a question of employing the right strategy.

If a copyright holder wants to put a stop to an infringer’s activities, in many cases a simple cease and desist letter will achieve the desired result. If not, it may be necessary to start an infringement action in the Patents County Court or the High Court, which places such pressure on infringers that most give in straightaway. The costs of taking such initial actions are usually within the means of most businesses.

If you would like to know more about enforcing your copyright please contact us.

The UK’s departure from the EU has negative effects for trade mark and design owners, but we have worked hard to ensure our clients are shielded from the worst of it.

EU trade marks and designs no longer cover the UK, so to obtain equivalent protection requires both an EU and a UK registration. However, we offer a cost-effective UK+EU package for trade mark and design applications with significant savings over the normal cost for two separate applications. Therefore our clients can cover the same geographic area for only a small additional cost.

Due to Brexit UK firms can no longer file EU trade mark and design applications, or represent clients on existing EU registrations. However, we have made special arrangements with one of the EU’s top IP firms to file EU trade mark and design applications for our clients at a beneficially low cost, so the total price for standalone EU applications is the same as before.

We offer a 1 Hour FREE Consultation to all new clients, to discuss their requirements.