Introduction
A Briefest of Histories

Further Information:

• The legal issues affecting a new brand name
• The legal issues affecting a new logo
• The legal issues affecting a new design
• Protecting a new brand name or new logo
• Protecting new designs
• Protecting ideas
• A Trade Mark Attorney
• Enforcement
• Defending a trade mark - Many businesses find that either (a) their use of a name or logo is under
attack usually by receiving a letter from solicitors or trade mark attorneys demanding that they cease
use of that name or logo (along with a list of other undertakings); or (b) they are informed by the
Intellectual Property authorities (in the UK it is the UK Intellectual Property Office) that a third party
has objected to their trade mark application. It is important not to delay in getting specialist
professional advice however uncontroversial or nonsensical the affair seems to be. In either case a
deadline will have been set and missing that deadline will have potentially critical consequences for
the business concerned. In cases falling within (a) either registered trade mark infringement or
passing off (or both) will have been alleged and undertakings will have been demanded. These
undertakings effectively constitute a type of “contract” the breach of which can be enforced by legal
proceedings. Issues concerning either registered trade mark infringement or passing off are often not
as clear cut as they are presented, and a business signing undertakings could therefore be making it
easier for the claimant to enforce its rights when the claimant might have faced far greater difficulty
otherwise. Even where there is clearly registered trade mark infringement or passing off there may be
an opportunity to buy time and perhaps negotiate terms. In cases falling within (b) a type of quasijudicial
proceeding will have been commenced intended to prevent the registration of the trade mark
application. The objecting party is usually arguing that the trade mark he is objecting to is similar to
his own earlier trade mark and (in the majority of cases) is to be registered for similar goods/services
giving rise to confusion. Again, such issues are often not clear cut and there may be an opportunity to
resolve the conflict amicably. One possible resolution method may be by way of a delimitation of
rights which is briefly discussed below, or by simply amending the trade mark application in question.
The options available differ according to the circumstances and the capability of the adviser used.
• Defending other IP rights
• Delimitation of rights
• Licensing
• Franchising
• Exploitation of IP rights
• Exploitation of Intellectual Property rights: raising funds and securitisation
• Intellectual Property Rights as investments
• Acquisition and transfer
• Registration of transactions
• E-commerce and the internet
• Trade Marks and the internet/e-commerce
• Domain names, “ownership” of a name and cyber-squatting
• Disputing domain names
• Websites and e-commerce – legal issues
• Contractual issues in e-commerce
• The legal issues affecting advertising
• Intellectual Property and Insurance
• Intellectual Property and Insolvency

© 2008 Decisis Limited.