On the 21st of Feb 2012 our Trademark application was accepted for the word Evolution and words Evolution Design in classes 16 and 42 ( see more about these classes below), so we may now legally use the ® symbol as we are protected anywhere in the European Union. This application was made successfully on our behalf by Trade Mark Attorney Alastair Hume of Ancient Hume and it followed this process outlined below. Using an industry professional is a very worthwhile investment if you are on either end of a trademark legal dispute.
If you want to see exactly what our trademark covers the link is here. In short Class 16 covers; Printed matter, printed publications, books, pamphlets, leaflets, manuals; training manuals; instructional and teaching material; newsletters; educational materials in printed form; posters; flyers; stickers; advertising material; audio visual printed presentation materials; all relating to design and website design; photographs; pre-printed stationery; pre-printed business stationery; plastic bags; calendars; catalogues; prints; business cards; postcards; transfers; apparatus for displaying and/or mounting prints; art prints; business forms and cards; fine art prints; graphic prints; graphic art materials; images; signs of paper or card; window signs; advertising signs. And Class 42 covers; Design services; web site design; creating and maintaining web sites; hosting web sites; commercial design services; computer-aided design services; corporate image design services; corporate logo design services; custom design services; graphic design; graphic art design; design of advertising materials; design of signs; design of logos; design of signage; design of album sleeves; design of labels and packaging for music products and media; brochure design; art work design; design of exhibition stands; design of consumer products; design, drawing and commissioned writing for the compilation of web pages on the Internet; design of marketing material; design of material for printing; design of products; retail design services; visual design; consultancy, information and advisory services relating to all of the aforesaid services; but not including design services relating to security systems and services.
What stopped us from registering previously? Around 10 years previously we had made enquiries about trademarking our name but found it to be too costly, both slow and complicated together with a high chance of failure at that time. Prior to meeting with attorney’s we did our own search and found there to be 9 abandoned applications which led us to believe that at that time it was not possible without receiving objections from existing trade mark owners in this area one of whom was BT. This was the view at that time of two legal firms based in Edinburgh. Although they did not rule it out the only way to find out if an application would be successful was to go ahead and pay & play.
If you want to consider trademarking your own name or logo you can search for these yourself at www.ipo.gov.uk and it is worth looking yourself at the outset, but after going through the process we would now thoroughly recommend using a specialist trade mark attorney.
Trademark registration today – the process is now faster and simplified and due to this we had a much higher chance of success with fewer objections, which are not necessarily the end of the application. However Ancient Hume handled these and the whole process for us. Before launching into any trademark searches we had a discussion about our business, our services (the full list is actually quite long) and any future services that might have an effect on our application and on the likely effect that could have on existing trademark holders whose property we were keen not to encroach upon.
So the skill that a trade mark attorney has it to know what to search for not just where and then frame up an application to ensure that your mark registration covers all that you want and need in terms of safeguarding your assets while being acceptable to existing trademark holders in the same or similar area’s to you, to reduce the chances of objections which saves time and a great deal of costs and even the chance of having your application blocked entirely.
Why we had to register our trademark now? In our case we wanted to own the trademark and guarantee the legal protection that it offers to safeguard the brand that we have spent 20 years in building and to ensure that others do not devalue it or add confusion to the marketplace, especially online where actual geography is less vital and where domain names are still easy to get as so many variants are available to register in the UK through Nominet no questions asked and even more so abroad. Protection was and remains our only objective. Read on to find out why this became an imperative for us. Prior to that we did not register, due the low likelihood of success and partly down to cost with no guarantee. That was a very false economy. The reason that we took a fresh look at trademarking was that in 2011 a price driven competitor opened here in Edinburgh with a strikingly similar name as well as trading online which caused confusion particularly on Google. Odd when we spend our working lives helping clients to differentiate them from competitors and stand out. So we were taken by surprise that any design company would open in Edinburgh with the same name selling the same website design services. The company was registered as Evolution Online Limited trading as Evolution Websites (and Evolution SEO). A polite request for them to change name was rebuffed and any prior knowledge of us was denied, odd as we were page 1 position 8 on Google for the search term ‘web design company Edinburgh’ which seems a fairly obvious search term to use when naming a website design company. Under the terms ‘Evolution website design’ we were page 1 positions 1, 3 and 4 many of the other results were indirect links to us from directory listings etc. After seeking legal advice we started the trademark registration process which was successful, but took some 4 months (which is very fast) during which we felt that our business brand and turnover were being harmed, so we also accepted our lawyers advice to use the courts through a Passing Off action including an Interim Interdict application which was rejected however Evolution Online Ltd was placed into liquidation before the full case could be heard just after the trademark application came through. All in all it was a very costly and distracting time for all. The cost of the trademark was an investment. The cost of the Passing Off action and subsequent Interim Interdict was a worthwhile risk. Two of the Directors of Evolution Online Limited (Company No. SC390415) were also Directors of a previous failed website design company called Moovin On Up (Company No. SC306027) which was also forced into liquidation. Another new website design company trading as a separate new legal entity operates from these same offices. Two of the directors are the same ones that previously ran EOL and MOU. However we wont name them here and there is no suggestion that they did anything illegal, we tried and failed to prove passing off. Also there is no suggestion or inference that the new company are doing anything wrong. Anyone can check on these things at: Companies House webcheck Buyer beware is all we would say and do due diligence wherever possible.
If we had held the trademark before this competitor chose to use a similar name then a simple ‘Cease and Desist’ letter may have been sufficient to them to stop using our name. If ignored then a court injunction would have forced the issue. However without that legal protection we were vulnerable. In these times you find out that you actually get no help from the bodies that you assume were set up to assist. Both Trading Standards and Companies House admitted to being powerless to help us, telling us to use the courts at our own expense. Nominet who look after .co.uk domain names offered us their free arbitration which is voluntary and if the other side ignores it you can take action but at an upfront cost of £3,000. The domain name that we most objected to was evolution-websites.co.uk not one of the many ‘Evolution’ domain names in our portfolio. The official liquidator even refused our cash offer for that domain name as it may or may not have even been one of the failed company assets, as it was registered by one of the directors not the company which is often quite normal. They still own it and it points to the new company website so they clearly are intent on getting and remaining rank and link value as possible even as it was for a failed company.
Now we own the trademark for Evolution and Evolution Design and hope that adds value to our business as well as legal protection.
To date (February 2018) we have successfully negotiated with 3 companies to stop using the name/word Evolution in the areas that conflict with us, in each case it was website design. One was Evolution Design (using the URL CreatedByEvolution.co.uk) web design of Hull, and another was NetEvolution (using NetEvolution.co.uk) of London an IT company but their services did cover website design therefore it was an infringement of our legal rights. The most recent company was Evolution Designers of Karrachi in Pakistan, although using a co.uk domain (under the jurisdiction of Nominet) and a UK postal address. All of these companies agreed to rename and rebrand without complaint after we pointed out the existing trademark registration, each claimed ignorance of the trademark process which is quite surprising for design companies that create logos, designs and concepts for clients. The fourth company did decide to fight in court but that company was wound by and ceased trading, the story is below.
Trademark registration procedure after searching existing marks:
– Submit Application; under the class or classes (to see these the lists visit http://www.ipo.gov.uk/type-classes) made as above aimed at avoiding conflict with existing marks if applicable.
– An official application filing receipt is issued within a week of filing. The application is examined on absolute grounds to determine the registrability of the mark. Usually the reports are issued quite quickly often within about 4 weeks.
– The Examiner will also carry out their own search for earlier trade mark applications or registrations which are similar and protect the same or similar goods or services. This report is for the Applicant’s information. The application will not be refused even if there is an identical mark for identical goods. If there are any earlier marks which the Examiner considers to be similar there is an opportunity to discuss and attempt to persuade the Examiner that the marks and/or the goods/services are not similar.
– The Examiner will notify the owner of any similar UK (or International Registrations effective in the UK) when the application is published. The owners of CTM registrations or International Registrations which designate the EU will not be notified by the Examiner unless they have opted in to the UK Registrar’s notification system. The onus is on the owner of an earlier right to oppose the application when published.
– The application (when accepted) is published in the trade marks journal. It is open for opposition for an initial period of 2 months from the publication date. Anyone considering opposing the application may apply to extend the opposition period by a third (final) month.
– If the opposition period is not extended and the application is not opposed the mark will be registered about 10 weeks from the publication date.
-The registration certificate will issue a few weeks later.
It is possible to secure registration in about 3 months in some cases but the process takes about 4 to 6 months on average. Objections can add a significant time to the application process, hence the need to frame the application with care and caution.
The trade mark registration lasts for a period of ten years from the filing date. In our case we filed on 19th September and several concerns and objections made by the Examiner at the Intellectual Property Office were discussed addressed and amended by Ancient Hume before the application appeared in the trade mark journal on 2nd December 2011. As there were no objections the application was granted.
Since that time as well as Evolution Online Ltd we have also had to enforce the infringements on our trademark on Evolution Design and Marketing of Leeds, who have since re-branded as Panda Splash.
Recently we have used Nominet’s Dispute Resolution Service and to mediate and broker a voluntary agreement with another similar named company and also we have used Facebook’s free complaints procedure to remove offending pages, not just because we don’t like them but because they infringe a legal trademark. YouTube also have a trademark takedown complaint service.
1. The word trademark is often spelt using two words trade & mark, in the UK we say Trade Mark Attorney. Trademark is American, we cannot find a definitive.
2. The directors of Evolution Online Ltd have since re-launched with a newly named company and as long as they do not abuse our trademark we have no issue with them. We won’t name them here.
3. Having the trademark is not the end, you need to protect it too and that may need a bigger budget that you had imagined.
4. In our proposal we state our offer to assign copyright to our Clients for no extra charge, beware not everyone does this.
5. It is an offence to use the ® symbol if you do not have the trademark your are claiming to. The same is not true for TM so be careful what you assume as you can freely add the TM (trademark) or SM (service mark) symbols to show that your reserve your rights, but you can only add the ® symbol or the words Registered Trademark after registration.
How to?: To create the ™ unregistered symbol, hold down the Alt key and type the numbers 0153 i.e. Alt+0153 or Option+2 on a Mac or use the html code & #0153; (without any spaces).
To create the ® registered trademark symbol, hold down the Alt key and type the numbers 0174 i.e. Alt+0174 or Option+R on a Mac or use the html code & #0174; (without any spaces).
However even if you do register your trademark, this can still happen to you:
Goliath versus David being a small coffee vendor in Bangkok, Thailand. Using a green & white round sign bearing the name Starbung Coffee and depicting a Muslim man with crescent moons on the side. According to owner his logo was not copied from Seattle but inspired by Islam. Hard to argue against in the court of public opinion, in the law court he did not have a leg to stand on. But his legal case with Starbucks brought him local fame and publicity, which has been good for his business.
Courtesy of Morton Fraser blog including such classic as; a). I’ve already secured protection for my brand by registering it as a company name or domain name …. oh really? And b). There is no need to go to the expense of registering a trade mark – the mark will be protected by copyright for free …. oh please tell me more? See the full Top Ten here > Top 10 Trademark Myths (now deleted sadly)
Posted by Neale Gilhooley (Updated 21/2/18)