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JGM
JGM, Solicitor
Category: Law
Satisfied Customers: 11559
Experience:  30 years as a practising solicitor.
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This relates to Trade Mark registration and management. I

Customer Question

This relates to Trade Mark registration and management. I recently acquired several international marks from the company I sold 5 years ago, which no longer needed them (due to its own re-branding). Previous IP lawyers offered to continue managing the marks but their rates are too high at £600 per hour. I don't yet have a long term strategy for the marks and I simply wanted to register them in my name and to provide service address which is my home address. I seem to be able to do re-registration directly at various IP portals. I wonder whether I can do without legal representation (and cost) at this stage. Obviously if any issues arise with the marks I would be looking to hire additional advice. One of the marks was challenged for non-use in Australia and I already dealt with it myself by providing 'obstacles' case documentation (everything is online these days). Is it a requirement at all to have IP lawyers for these matters or can I manage myself until such time when I need to hire more expert advice?
Submitted: 1 year ago.
Category: Law
Expert:  JGM replied 1 year ago.
Nowadays there is no reason why you can't deal with trademarks yourself. In the UK you use the Intellectual Property Office online via the .gov site. There are similar sites for EU and worldwide trademark registrations. I can always help you with any specific queries. You don't need formal legal representation and frankly £600/hr for filling in forms is extortionate. Happy to discuss further. I hope that helps. Please leave a positive rating so that I am credited for my time.
Customer: replied 1 year ago.
Thank you. Last point - some international registrations require foreign addresses for service - what would you use? Seems difficult to open PO boxes and this is what big IP lawyers claim their 'value'..
Expert:  JGM replied 1 year ago.
Use the Madrid Protocol and everything may be done electronically.
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Customer: replied 1 year ago.
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Customer: replied 1 year ago.
We own an internationally registered trade mark on a logo. A company in Australia applied to register a similar mark in the same class but was refused. We don’t have a problem giving consent on their mark registration as the marks are not at all confusing and only slightly similar in shape. We would like to know what sort of compensation we could request for the consent from the other party. The company is quite big and obviously want their mark registered, but we just spent a lot in legal fees getting the trade marks back from the previous owner so would like to see what room for cost recovery we have.
Expert:  JGM replied 1 year ago.
These situations are generally down to negotiation. Have they made an offer?
Customer: replied 1 year ago.
The other side approached this by filing non-use application in Australia to struck off our mark from the registry, and we are about to file our 'obstacles' case which supports our non-use and how we were prevented from using the mark in Australia (long winded company sale, refinancing, ownership transfer delay etc). The applicant is a large travel agent and their mark registration was refused because it's a bit similar to ours. If we all continue - court decision costs could be high, we are told anything from 10-15k USD. We are thinking of offering a concent agreement on co-existence and settlement at say 9k USD. Or we approach them with the idea and ask them to offer first? what would you do? what other valuation points could be used to apprais 'value' of the concent?
Customer: replied 1 year ago.
out of interest - if the mark is Internationally registered, would Australian non-use application if successulf mean that the mark can be removed entirely from all Madrid protocol countries too? thx