EU Community Trademark

MizMix

Has anyone done this without a solicitor? Is it doable?

What does it protect against? Is it just someone else using the same or similar name in similar categories (or just the name at all)? But if someone in say the US used the name there's nothing that can be done about it? Budget is small, cashflow is tight and trademark wasn't something I even thought of until I was advised to look into it.

And if someone did take my name I'd have to be prepared to pay a lot on legal fees to fight it right? I'm just trying to weigh up if it's essential. I've invested in a really good brand so I don't want to risk someone else using it and perhaps trademarking it before me- small and unlikely risk but not impossible I'm sure

mneylon

MizMix wrote: »

Has anyone done this without a solicitor? Is it doable?

We have. I wouldn't recommend trying to do it solo. I'd also be wary of trying to get a non-specialist solicitor to handle it, as they'll either screw it up or have to outsource it a specialist.

MizMix wrote: »

What does it protect against? Is it just someone else using the same or similar name in similar categories (or just the name at all)?

You might find the guides from INTA useful:
http://www.inta.org/trademarkbasics/Pages/TMBasics.aspx

Bear in mind there are two basic types of trademark - one is for words, the other is more for logos (even if the logo is made up of words)

MizMix wrote: »

But if someone in say the US used the name there's nothing that can be done about it?

You can also get a US trademark for the same thing as you have in the EU, though you would need to show proof of first use in commerce in the US

MizMix wrote: »

And if someone did take my name I'd have to be prepared to pay a lot on legal fees to fight it right? I'm just trying to weigh up if it's essential. I've invested in a really good brand so I don't want to risk someone else using it and perhaps trademarking it before me- small and unlikely risk but not impossible I'm sure

You need to weigh up the pros and cons

I'd recommend finding a "friendly" trademark solicitor and having a conversation with them.

Trademark / IP stuff is complicated and can be expensive to deal with, but so can someone (ab)using your brand..

MizMix

Thanks Blackknight. I had a quick chat with a specialist solicitor and he's very fair. He already did preliminary searches to ensure the name was available. It comes down to budget and revenue- I am sending a small quantity of stock to Amazon in the USA (FBA). And at the minute I get a handful of orders from outside the EU a month- not enough to justify a TM yet.

Sounds like it's best to bite the bullet and get the EU one initially. I don't think the cost is much more than Ire/UK together so might as well go for it and see where the business is down the line with regard to rest of world. My understanding is it's a positive if looking for outside investment down the line..

mneylon

MizMix wrote: »

Sounds like it's best to bite the bullet and get the EU one initially. I don't think the cost is much more than Ire/UK together so might as well go for it and see where the business is down the line with regard to rest of world. My understanding is it's a positive if looking for outside investment down the line..

The EU trademark will cost more to file than the Irish one, unless you're looking at total fees ie. theirs + the solicitor's

Getting the EU one covers all 28 member states so it makes more sense than getting individual ones

MizMix

I would definitely have to do UK and Ireland as a minimum. Cost of the EU one including solicitor fees is less than double the EU one plus solicitors fees...I should have clarified- yes plus fees

pedronomix

Unless you are doing substantial business volumes and have the resources to defend your mark, you are wasting money going down the registered Trade Mark route. You can simply protect your name by claiming the Trade Mark by appending the letters TM to your product name. For clarity, there are both registered and unregistered trade marks for names/words... Logos and styles are somewhat more complicated. Unless you are doing serious business volumes, TM affords you defendable protection at zero cost.... The actual costs of defence are similar though.

MizMix

Pedronomix- thank for that as that was my fear. My branding agency have said it's important but once I spoke to the solicitor (as helpful as he was) I couldn't help thinking I'm too small a fish at this point. I may be a limited company but it's just me, six months in, just about to start taking a modest wage due to reinvestment each month....I decided investing in a branding agency made sense but I had not factored this in at all (particularly from cashflow)..another 1.5k for the EU community TM. I definitely don't have the resources to fight it if it came to it and not for the next 12 months at least.

So really I could just register my name with the CRO myself for Ireland and add a TM in text beside my company name?

MizMix

Pedronomix- thank for that as that was my concern. My branding agency have said it's important but once I spoke to the solicitor (as helpful as he was) I couldn't help thinking I'm too small a fish at this point. I may be a limited company but it's just me, six months in, just about to start taking a modest wage due to reinvestment each month....I decided investing in a branding agency made sense but I had not factored this in at all (particularly from cashflow)..another 1.5k for the EU community TM. I definitely don't have the resources to fight it if it came to it and not for the next 12 months at least.

So really I could just register my name with the CRO myself for Ireland and add a TM in text beside my company name? Would I have to have it as part of my logo to 'claim' the name as such (from a visual point of view I'd prefer not to add TM to the logo unless necessary)? So could I add it in the 'about us' section of my site and collateral?

pedronomix

CRO business name registration offers no trademark protection benefit. Worth a read http://www.inta.org/TrademarkBasics/FactSheets/Pages/MarkingRequirementsFactSheet.aspx

anoneemus

Does anyone have a ballpark figure how much this all costs. I want to register a European Trademark now and possibly a global one down the road.

In order to register a European (CTM) do you need to have it registered in Ireland first?

Graham

For an EU trademark the filing fees start at €900. That doesn't include whatever professional advice you feel is necessary.

No requirement to register an Irish trademark if you're going straight for an EU one.

MizMix

I was quoted 900euro (office fees)plus professional fees of 600euro on top of this covering three categories. The solicitor specialises in this area and has been great to deal with (even though I'm still sitting on the fence, I'll use him when the time comes). PM if you want his details