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How to protect your intellectual property - Kirsty Brummell - Trademark Tonic
Episode 17321st July 2023 • Bring Your Product Idea to Life • Vicki Weinberg
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Today on the podcast I'm speaking to Kirsty Brummell. Kirsty helps businesses ranging from startups to larger corporations to effectively protect, enforce, and manage their trademarks and designs. She gives advice on copyright matters and helps businesses realise the potential of their intellectual property. 

It’s something I know a lot of you would like to know more about, so I was thrilled to connect with Kirsty to learn more. 

In this episode we discuss the different kinds of intellectual property, how to protect yourself, how much you can expect to page, and what to do if you are working to a tight budget.

We also cover what to do if you believe someone is violating your copyright and also what to do if you get contacted by someone to say that you are violating theirs.

It’s a fantastic episode full of a huge amount of practical advice for anyone running their own business. The key takeaway is that Kirsty makes this complex subject a lot less scary - her overlying message is, whatever happens, please don't panic. I think that's a really reassuring message and hopefully you will feel the same after you've listened to the episode.

Listen in to hear Kirsty share:

  • An introduction to herself and her business (02:08)
  • What intellectual property is, and some of the things you might want to protect as a small business (02:43)
  • How automatic copyrights work (04:43)
  • Patents (07:14)
  • Trademarks and protecting your brand name (08:33)
  • Top tips for registering a trademark (14:14)
  • What you can expect to pay for these (16:25)
  • The best ways to protect your intellectual property when you are on a tight budget (17:59)
  • What happens after you have protection in place? (19:38)
  • Monitoring and managing issues and infringements that might arise (21:33)
  • What to do when a bigger brand copies you (23:05)
  • What to do if you encounter copyright infringement (25:54)
  • What to do if someone says you have infringed on their copyright or trademark (28:39)
  • Dealing with a cease and desist letter (30:48)
  • The meaning of ™ & R in a circle (33:39)
  • Her number one piece of advice for protecting your intellectual property (36:21)

USEFUL RESOURCES:

Trademark Tonic Website

Kirsty Brummell Linked In

Trademark Tonic Linked In

Trademark Tonic Twitter

Trademark Tonic Facebook

UK Gov Intellectual Property Office

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Transcripts

Speaker:

Welcome to the Bring Your Product Idea to Life podcast.

Speaker:

This is the podcast for you if you're getting started selling

Speaker:

products, or if you'd like to create your own product to sell.

Speaker:

I'm Vicki Weinberg, product creation coach and Amazon expert.

Speaker:

Every week I share friendly, practical advice as well as inspirational

Speaker:

stories from small businesses.

Speaker:

Let's get started.

Vicki Weinberg:

Hi.

Vicki Weinberg:

I hope you're having a great day so far.

Vicki Weinberg:

So today on the podcast I'm speaking to Kirsty Brummel.

Vicki Weinberg:

Kirsty helps businesses ranging from startups to larger corporations to

Vicki Weinberg:

effectively protect, enforce, and manage their trademarks and designs.

Vicki Weinberg:

She gives advice and copyright matters and helps businesses realize the

Vicki Weinberg:

potential of their intellectual property.

Vicki Weinberg:

So this is an episode I've been wanting to record for quite some time.

Vicki Weinberg:

I was just looking for the perfect person.

Vicki Weinberg:

And then a along came Kirsty, which was fantastic.

Vicki Weinberg:

So I get lots of questions about patents, trademarks, copyrights, how to

Vicki Weinberg:

keep your intellectual property safe.

Vicki Weinberg:

Um, and Kirsty is a perfect person to answer all of those questions.

Vicki Weinberg:

So we go into detail about all the different kinds of intellectual property,

Vicki Weinberg:

um, what you need to do to register, how much it costs, and what to do

Vicki Weinberg:

if you believe someone is violating.

Vicki Weinberg:

Your copyright and also what to do if you get contacted by someone to

Vicki Weinberg:

say that you are violating theirs.

Vicki Weinberg:

So all in all, I think there is a lot that we can all learn from this episode.

Vicki Weinberg:

I certainly learnt lots of things I didn't know before.

Vicki Weinberg:

Um, and I guess the key thing I want you to take away is that

Vicki Weinberg:

Kirsty makes this kind of complex subject um, a lot less scary.

Vicki Weinberg:

Um, I think her overlying message is, whatever happens, please don't panic.

Vicki Weinberg:

Um, and I think that's a really reassuring message.

Vicki Weinberg:

Hopefully you all feel the same after you've listened to the episode.

Vicki Weinberg:

And if you have any questions at all on anything that Kirsty's covered in

Vicki Weinberg:

this episode, you'll be able to contact her via the details in the show notes.

Vicki Weinberg:

So I'd love now to introduce you to Kirsty.

Vicki Weinberg:

So, hi Kirsty.

Vicki Weinberg:

Thank you so much for being here.

Kirsty Brummel:

Thanks for having me.

Kirsty Brummel:

Thanks for having me on the podcast.

Vicki Weinberg:

You're so welcome.

Vicki Weinberg:

Can we start by you, please give an introduction to yourself,

Vicki Weinberg:

your business, and what you do.

Kirsty Brummel:

Yeah, sure.

Kirsty Brummel:

So my name's Kirsty Brummel.

Kirsty Brummel:

I'm a chartered UK trademark attorney and I am set up

Kirsty Brummel:

Trademark Tonic, um, in May, 2020.

Kirsty Brummel:

And basically I help businesses and individuals to protect their

Kirsty Brummel:

intellectual property rights.

Kirsty Brummel:

So.

Kirsty Brummel:

Covering trademarks and designs and copyright mainly.

Kirsty Brummel:

Um, and just helping in all aspects, whether that be protection,

Kirsty Brummel:

enforcement, management, um, and anything to do with IP matters.

Vicki Weinberg:

Brilliant.

Vicki Weinberg:

Thank you so much.

Vicki Weinberg:

So I know this is a huge, huge topic, Kirsty.

Vicki Weinberg:

So let's start, um, by talking about intellectual property and maybe what that

Vicki Weinberg:

means and what are some of the things that we could protect as a small business.

Kirsty Brummel:

Yeah, sure.

Kirsty Brummel:

So in terms of intellectual property, um, it's a, an umbrella term, which

Kirsty Brummel:

basically it's, um, to do with intangible assets and that covers, um, things

Kirsty Brummel:

such as trademarks, designs, copyright, patents, and there's also some other,

Kirsty Brummel:

um, topics as well that it can cover off.

Kirsty Brummel:

But those are the main, um, form and I specialize particularly in

Kirsty Brummel:

trademarks, designs and copyright.

Kirsty Brummel:

Um, so with trademarks, that covers, um, brand names and logos and, um, basically,

Kirsty Brummel:

um, you know, registering a trademark, for example, to obtain protection and be able

Kirsty Brummel:

to, um, help you to defend your brand name against other businesses if, if necessary.

Kirsty Brummel:

And also to build up your own rights in relation to a brand name or logo.

Kirsty Brummel:

Um, designs could include registering a design again, to try and help protect

Kirsty Brummel:

it, um, to be able to prevent other people, you know, from, from copying or,

Kirsty Brummel:

um, having a sort of identical type of design or something very closely similar.

Kirsty Brummel:

Um, and copyright is an automatic right in the uk and that can cover things.

Kirsty Brummel:

Um, it's sort of like a, a, a broad variety of things,

Kirsty Brummel:

such as books and magazines.

Kirsty Brummel:

It could include drawings, um, it could include sculptures.

Kirsty Brummel:

Um, so all sorts of things that fall under copyright and that comes into

Kirsty Brummel:

existence once you record whatever it is.

Kirsty Brummel:

So for example, drawings that you actually record them down and then you

Kirsty Brummel:

would have copyright in relation to that.

Kirsty Brummel:

Um, and then patents as well, which is to do with inventions.

Kirsty Brummel:

And, um, basically there needs to be an inventive step, um, and

Kirsty Brummel:

capable of industrial application.

Kirsty Brummel:

Um, and also it needs to be novel in order to obtain a patent

Kirsty Brummel:

registration, for example, in the UK.

Vicki Weinberg:

That's brilliant.

Vicki Weinberg:

Thank you.

Vicki Weinberg:

Um, so just tell me about copyrights.

Vicki Weinberg:

You mentioned that you have automatic copyright.

Vicki Weinberg:

What, what does that mean, Kirsty?

Kirsty Brummel:

So, in the UK, um, with certain types of intellectuality,

Kirsty Brummel:

for example, with trademarks and designs and also patterns you

Kirsty Brummel:

can go through, um, registration.

Kirsty Brummel:

So for example, with trademarks, you might want to, um, register your brand

Kirsty Brummel:

name at the Intellectual property office, um, which can be done online,

Kirsty Brummel:

um, in the UK I P O, which is what it's called is based in Newport.

Kirsty Brummel:

They've also got an office in London, but a lot of, um,

Kirsty Brummel:

services are provided online.

Kirsty Brummel:

Um, so there's that registration route, but with copyright, um, you don't have

Kirsty Brummel:

to go through this registration route.

Kirsty Brummel:

In the UK it's just basically automatic that it comes into existence.

Kirsty Brummel:

Once you've recorded the works that you've created, um, you know, for example,

Kirsty Brummel:

down on a piece of paper, maybe you've created something on the computer.

Kirsty Brummel:

Um, and once it's recorded, um, down or recorded in writing, so to speak.

Kirsty Brummel:

Then the offer of that work will have copyright protection

Kirsty Brummel:

basically in, in that work itself.

Vicki Weinberg:

Oh, okay.

Vicki Weinberg:

I didn't realize that.

Vicki Weinberg:

Do you have to do anything to prove, like when you created it, for example.

Kirsty Brummel:

Yeah, so that's one thing that I always, um, sort of mention,

Kirsty Brummel:

you know, to businesses and individuals when they come and they ask about

Kirsty Brummel:

copyright is to make sure if possible, um, when you are creating any new work.

Kirsty Brummel:

So maybe, you know, if you're doing drawings, or, um, you know, you're,

Kirsty Brummel:

you're writing a book or whatever it is, that basically along the way you

Kirsty Brummel:

are making records of, you know, the dates of creation of certain pieces

Kirsty Brummel:

of work, and also who created it.

Kirsty Brummel:

So if it's yourself, um, you know, sort of keeping a record of that.

Kirsty Brummel:

Um, and then that could all be used if, if necessarily down the line as

Kirsty Brummel:

evidence, you know, if there was any sort of dispute in relation to, for

Kirsty Brummel:

example, who owns copywriting of work.

Kirsty Brummel:

Um.

Kirsty Brummel:

And also, you know, if anyone came along and said, um, copied book material,

Kirsty Brummel:

that you then might want to use your records and evidence in a, um, worst case

Kirsty Brummel:

scenario, last resort court case against another business maybe or an individual.

Vicki Weinberg:

That makes sense.

Vicki Weinberg:

Thank you.

Vicki Weinberg:

Um, so let's say that someone's looking to get some kind of protection for whether

Vicki Weinberg:

it's their brand name or it's a, a patent.

Vicki Weinberg:

Are there any steps we need to take before going ahead and registering?

Kirsty Brummel:

Yes.

Kirsty Brummel:

So, um, depending on what you're looking to protect, um, for

Kirsty Brummel:

example, with patent, um, there are certain criteria you have to meet.

Kirsty Brummel:

So for, um, say an invention to actually be patentable in the first

Kirsty Brummel:

place, um, it would have to be novel.

Kirsty Brummel:

So it has to be new and not already out there.

Kirsty Brummel:

You know, like in the public domain, it has to have an inventive step.

Kirsty Brummel:

Um, something that's not obvious, that's, that's inventive about,

Kirsty Brummel:

um, you know, what you've, um, created in terms of the invention.

Kirsty Brummel:

And then it has to be capable of industrial application.

Kirsty Brummel:

So before actually then trying to, you know, like file a pattern application.

Kirsty Brummel:

You want to make sure, first of all, that you've met those criteria where

Kirsty Brummel:

possible so that, you know, you don't want sort of waste money, you know, like

Kirsty Brummel:

finding the application and find out it wasn't patentable in the first place.

Kirsty Brummel:

It's good to, to look at that first of all.

Kirsty Brummel:

And also, the other important angle is to do any relevant, um, searching.

Kirsty Brummel:

So freedom to operate, searching, where you're basically seeing whether there's

Kirsty Brummel:

any existing patents, um, inventions out there where you could be infringing

Kirsty Brummel:

those patent rights if you were to, um, basically, you know, like use your

Kirsty Brummel:

invention in commerce or, you know, then filing this patent application

Kirsty Brummel:

whether there might be any issues in conflicting with existing rights.

Kirsty Brummel:

Um, and that's patents and then, um, the same type of things carry

Kirsty Brummel:

across, you know, to, um, for example, trademarks and designs as well, where

Kirsty Brummel:

again, searching is very important.

Kirsty Brummel:

Where possible before, for example, filing a trademark application to make

Kirsty Brummel:

sure that your new brand name or logo.

Kirsty Brummel:

Wouldn't be infringing an existing, um, trademark, right.

Kirsty Brummel:

And registered trademark, right, for example, in the UK.

Kirsty Brummel:

Um, or that there wouldn't be, um, sort of a passing off issue, which basically

Kirsty Brummel:

if you are using a brand name over time in the UK, you've built up some goodwill.

Kirsty Brummel:

Um, you can, um, have established basically, um, Passing off rights, so

Kirsty Brummel:

to speak, and is to make sure you're not conflicting with those rights as well,

Kirsty Brummel:

where people have built up, um, goodwill over time in relation to a brand name.

Kirsty Brummel:

So sort of registered and under registered rights to look at um,

Kirsty Brummel:

so yeah, definitely searching is, is is quite important, I would say.

Kirsty Brummel:

And then on the trademark side as well, um, it's making sure, um, and

Kirsty Brummel:

this is another important point, that your new brand name or logo is

Kirsty Brummel:

actually distinctive enough in the first place to obtain a registration.

Kirsty Brummel:

So what happens when you file, for example, a trademark application at

Kirsty Brummel:

the UK Intellectual Property office, is that it will get examined, um, after

Kirsty Brummel:

about two to four weeks from filing, and the examiner at the office will be

Kirsty Brummel:

looking at, um, a trademark application with the, with the brand name or logo

Kirsty Brummel:

to see is it distinctive enough to actually be registered as a trademark?

Kirsty Brummel:

Would it be seen as a badge of origin by consumers?

Kirsty Brummel:

Um, so they make an assessment and in terms of being distinctive, the, the, the,

Kirsty Brummel:

the best and the strongest trademarks are those, for example, that are invented.

Kirsty Brummel:

Words, or maybe you've got a combination of two unusual terms brought together,

Kirsty Brummel:

whereas weaker trademarks and those which could be hard to protect, would

Kirsty Brummel:

be more on the descriptive side.

Kirsty Brummel:

Um, so it's like, you know, the classic sort of like trying to register apple

Kirsty Brummel:

for apples and, and that kind of thing.

Kirsty Brummel:

Um, so where possible, um, selecting a good and strong brand name or having a,

Kirsty Brummel:

a good logo in the first place could be important for creating the biggest bubble

Kirsty Brummel:

of protection around your um, brand or logo and also hopefully decreasing

Kirsty Brummel:

the chances of issues, you know, like with other, um, businesses as well.

Kirsty Brummel:

Um, because the more distinctive and sort of inventive the name is, the less

Kirsty Brummel:

likely hopefully, that you'd be then conflicting with other trademark rights.

Vicki Weinberg:

That's really helpful.

Vicki Weinberg:

Thank you.

Vicki Weinberg:

And I think I heard something once before, you'd be able to tell me

Vicki Weinberg:

if this is correct, Kirsty, that you can't register the same name.

Vicki Weinberg:

If there's a company in the same industry, like company in the same industry with

Vicki Weinberg:

the same name that can be a problem.

Vicki Weinberg:

But let's say you were going to open an e-commerce business.

Vicki Weinberg:

You can open a, a sh a shop, but there was a garden, a gardening, a

Vicki Weinberg:

gardening business with a similar name.

Vicki Weinberg:

That would be okay.

Vicki Weinberg:

Is that correct or not correct?

Kirsty Brummel:

So it, it can depend, um, on basically what the sort of

Kirsty Brummel:

rights are that, for example, that business has to do with, um, you

Kirsty Brummel:

know, like e-commerce, let's say.

Kirsty Brummel:

Um, and whether their rights are really limited to that specific area,

Kirsty Brummel:

and they've got, for example, the UK trademark registration where they've just

Kirsty Brummel:

covered certain classes that cover off, you know, they're products and services

Kirsty Brummel:

of interest, um, and not covering, for example, gardening products and services.

Kirsty Brummel:

So there's a, you know, like that distinction in terms of what's,

Kirsty Brummel:

um, there's a classification system basically that, you know,

Kirsty Brummel:

trademarks have, are filed for.

Kirsty Brummel:

And if you are in separate classes, then a lot of the time

Kirsty Brummel:

there can be that distinction and also commercial differences.

Kirsty Brummel:

And these, um, different, um, you know, if you're then filing an application

Kirsty Brummel:

that can coexist basically alongside this other registration, which is

Kirsty Brummel:

in a, you know, a different class.

Kirsty Brummel:

And also if the owners, you know, like got no issues with this new application

Kirsty Brummel:

coming through with the same name.

Kirsty Brummel:

Now, sometimes there could be businesses that have, um, an established reputation.

Kirsty Brummel:

I mean, particularly, you know, like big business multinationals where they

Kirsty Brummel:

might have covered so many classes in their trademark application, but

Kirsty Brummel:

because they have a reputation and because they're so well known, then

Kirsty Brummel:

basically it broadens out, you know, the, the extent of their trademark

Kirsty Brummel:

rights and then they can basically oppose, for example, a new application

Kirsty Brummel:

on the basis of their reputation, even, you know, extending to dissimilar,

Kirsty Brummel:

um, classes of goods and services.

Kirsty Brummel:

So in that situation, there could still potentially be an issue,

Kirsty Brummel:

but a lot of the time, you know, you can find the same brand name

Kirsty Brummel:

where there's different classes.

Kirsty Brummel:

Um, I would still say that, you know, I'd be quite cautious about, you

Kirsty Brummel:

know, when it is the same brand name, making sure there'd be no conflict

Kirsty Brummel:

in seeing, you know, what the sort of commercial interests are of the owner.

Kirsty Brummel:

Um, sometimes you can sort of try it out and test the water

Kirsty Brummel:

and, and see how it goes.

Kirsty Brummel:

Um, but the other thing to mention as well is even if you obtain a trademark

Kirsty Brummel:

registration, there is, um, still a sort of vulnerability in terms of it's

Kirsty Brummel:

still possible to cancel a registration.

Kirsty Brummel:

So even when you've got a registration, none of a business could come along

Kirsty Brummel:

and try and cancel that on the basis of, for example, if they've

Kirsty Brummel:

got earlier trademark rights.

Kirsty Brummel:

Um, I mean, hopefully that wouldn't happen, but it's just to be

Kirsty Brummel:

aware that even when you have the registration now doesn't mean it's

Kirsty Brummel:

a hundred percent safe, so to speak.

Vicki Weinberg:

That's really useful.

Vicki Weinberg:

Thank you.

Vicki Weinberg:

So when we're registering trademarks, do we have to think about registering them

Vicki Weinberg:

for all the different classes or just stick to the classes that are relevant?

Kirsty Brummel:

Yeah, I mean, it's a really good question.

Kirsty Brummel:

Um, and it can depend on certain factors.

Kirsty Brummel:

Um, so for example, if you've got a business and you are just in a

Kirsty Brummel:

specific area, um, let's say, you know, maybe like beauty products or

Kirsty Brummel:

something like that, then you might want to and start off, and that falls,

Kirsty Brummel:

um, a lot of time under class free.

Kirsty Brummel:

Um, but maybe you are thinking in a few years time already, you know, you might be

Kirsty Brummel:

expanding your product range, maybe like going into, um, sort of, um, um, medicated

Kirsty Brummel:

kind of products or something like that, which would fall under class five.

Kirsty Brummel:

So you might be thinking, oh, well I'm planning on doing this, so you might

Kirsty Brummel:

want to cover, you know, more than you'd be using, um, sort of currently, but

Kirsty Brummel:

you know, sort of trying to cover off what you are planning to use down the

Kirsty Brummel:

line, um, intended use, so to speak.

Kirsty Brummel:

Um, but it can come down to budget as well sometimes as to, you know, how

Kirsty Brummel:

many classes you cover will increase the cost, you know, like in terms

Kirsty Brummel:

of, for example, the official fees at the UK and such property office.

Kirsty Brummel:

So then, um, sometimes it come, might come down to your core classes of interest

Kirsty Brummel:

at the beginning, and then maybe later down the line when you've got more budget

Kirsty Brummel:

to be thinking about filing, maybe like another trademark application, you might

Kirsty Brummel:

want to then cover off different classes.

Kirsty Brummel:

Um, but again, um, the other thing, the sort of thing, think about, there's all

Kirsty Brummel:

the sort of different things to think of all the time is that, um, you know, is is

Kirsty Brummel:

it good to cover up what you can at the beginning just to avoid, um, you know,

Kirsty Brummel:

like later on down the line, could someone else come along and then maybe, um,

Kirsty Brummel:

cause a conflict, you know, with like new classes that you might want to then cover.

Kirsty Brummel:

Um, so certainly it's something to be sort of carefully

Kirsty Brummel:

thinking about at the beginning.

Kirsty Brummel:

Um, but a lot of the time I find that, um, when businesses come to me, you know, it's

Kirsty Brummel:

more about the sort of, um, especially when they're starting up just about the

Kirsty Brummel:

core classes at the beginning and then maybe sort of thinking further down the

Kirsty Brummel:

line about covering off of the classes.

Vicki Weinberg:

That makes sense.

Vicki Weinberg:

Thank you.

Vicki Weinberg:

Um, you mentioned costs a moment ago Kirsty.

Vicki Weinberg:

This is probably a good time to talk about costs and I really appreciate

Vicki Weinberg:

you will not be able to give us exact costs because there'll be so many

Vicki Weinberg:

different scenarios for every different, you know, every different business.

Vicki Weinberg:

Everyone listening will have their own unique situation, but can you perhaps

Vicki Weinberg:

give us some ballpark figures for what we are looking at if we want to protect

Vicki Weinberg:

our intellectual property, please.

Kirsty Brummel:

Yes, of course.

Kirsty Brummel:

So with, um, trademarks as an example, um, there's a set of official fees and then

Kirsty Brummel:

if you seek professional help, there'll be a professional fee on top of that.

Kirsty Brummel:

So we're really talking about, um, in the hundreds in terms of, for example,

Kirsty Brummel:

trademarks and designs with trademarks.

Kirsty Brummel:

Specifically as an example, the official fee at the UK IPO um, would

Kirsty Brummel:

be 170 pounds when you file online for one class of goods or services.

Kirsty Brummel:

And then for each extra class of good source services that you add, the

Kirsty Brummel:

official fee would be 50 pounds for each extra class that you had done.

Kirsty Brummel:

And then on top of that, there'd be a professional fee and that basically

Kirsty Brummel:

can range, you know, like in the low hundreds to the, to the mid hundreds

Kirsty Brummel:

depending on the firm that you, you go to.

Kirsty Brummel:

Um, and we've designed, it's in the sort of low hundreds as well.

Kirsty Brummel:

And then in terms of patents, that's more expensive.

Kirsty Brummel:

And usually you are looking at, in, in the thousands in terms of, um, the sort of

Kirsty Brummel:

like the searching and the filing process.

Kirsty Brummel:

Um, and also the, the patterned timeline is a lot longer as well, you know, like

Kirsty Brummel:

compared to trademarks and designs.

Kirsty Brummel:

Thank you so much for explaining that.

Kirsty Brummel:

Um, how about if you're on a bit of a budget, are there ways to

Kirsty Brummel:

protect your intellectual property?

Kirsty Brummel:

Outspending lots of money, at least at the outset?

Kirsty Brummel:

Yes.

Kirsty Brummel:

So I would say that, um, you know, you, you, if you're on a limited budget, you

Kirsty Brummel:

could, for example, look to, um, try and file a trademark application just for your

Kirsty Brummel:

main brand name or maybe a combined mark.

Kirsty Brummel:

So you're going for your um, brand name and maybe like a sort of logo,

Kirsty Brummel:

um, that you'd be using them both in com, um, commerce, but trying

Kirsty Brummel:

to cover off under, under one mark, you know, right, rather than filing

Kirsty Brummel:

separate applications for each element.

Kirsty Brummel:

Um, now that could be good from a, a budget point of view, because

Kirsty Brummel:

you might be filing one application instead of two at the same time.

Kirsty Brummel:

Um, when you're trying to get the broadest protection possible, um, it's

Kirsty Brummel:

advisable, you know, to, to try and, um, file these different elements.

Kirsty Brummel:

So for example, the plain words of your, um, main brand name, you might

Kirsty Brummel:

want to file a separate application for, um, a logo image, um, to basically

Kirsty Brummel:

get the broadest level of protection surrounding that, um, element.

Kirsty Brummel:

Um, but at the same time, you know, when you're weighing it up against budget, then

Kirsty Brummel:

you might want to go for a combined mark or just filing maybe just for the brand

Kirsty Brummel:

name, if that's the main thing we'll use.

Kirsty Brummel:

And also if you're planning on changing your logo image or you

Kirsty Brummel:

might be updating it along the way, then you probably wouldn't

Kirsty Brummel:

want to file for that until you've definitely got that sort of finalized.

Kirsty Brummel:

Then also that you would be using it for the foreseeable future so that you don't

Kirsty Brummel:

have to then keep sort of, you know, like refiling down the line for the logo.

Vicki Weinberg:

That's really helpful.

Vicki Weinberg:

Thank you.

Vicki Weinberg:

So once you have some protection in place, is that enough?

Vicki Weinberg:

Can we just sit back and relax now?

Vicki Weinberg:

Or do we need to continually monitor?

Vicki Weinberg:

Um, yeah.

Vicki Weinberg:

What, what do we ne do next kirsty?

Kirsty Brummel:

Mm-hmm.

Kirsty Brummel:

So in terms of, um, having a registration, I mean, that's great.

Kirsty Brummel:

You know, if you've managed to obtain a trademark registration, then that

Kirsty Brummel:

gives you, um, the right to be able to, for example, prevent another business

Kirsty Brummel:

or individual from using an identical or a confusingly similar brand name

Kirsty Brummel:

or logo where it covers off identical clause, similar goods and services.

Kirsty Brummel:

So that's what the registration gives you the right to do.

Kirsty Brummel:

So you could, for example, um, send a cease and desist letter to prevent

Kirsty Brummel:

someone using, um, say the same brand name in commerce, where they're

Kirsty Brummel:

covering overlapping goods and services.

Kirsty Brummel:

Or it could be that you could file an opposition against a new application

Kirsty Brummel:

because you've seen, you know, that maybe again, the identical brand name's

Kirsty Brummel:

coming through and it covers, um, similar maybe goods to what you are covering.

Kirsty Brummel:

Um, so it's, it's good in terms of, um, giving you those rights now.

Kirsty Brummel:

How you can see whether, you know, like there's a new application

Kirsty Brummel:

with a, a conflicting brand name.

Kirsty Brummel:

Um, the UK IPO is good in that it does, um, basically an examination

Kirsty Brummel:

phase do, um, the examiner does their own search and they look for, um,

Kirsty Brummel:

identical, similar existing marks.

Kirsty Brummel:

And what they do is they'll notify those existing owners, you know, of this new

Kirsty Brummel:

application unless the applicant can successfully argue then that the marks

Kirsty Brummel:

are, are basically dissimilar, all the goods and services don't um, overlap

Kirsty Brummel:

in terms of being identical, similar.

Kirsty Brummel:

So you could be notified by the UK IPO you know, of a new application coming

Kirsty Brummel:

through, but that's no guarantee.

Kirsty Brummel:

Now, like in terms of the search that they do, um, it's not sort of a hundred

Kirsty Brummel:

percent, um, for proof, so to speak.

Kirsty Brummel:

Um, so you can also as a separate, um, action, set up, um, a monitoring or

Kirsty Brummel:

watching service, and that can be done, you know, like through professional help.

Kirsty Brummel:

So, for example, I help businesses with, um, reporting out, you know,

Kirsty Brummel:

like a watching service every month as to what's coming through the

Kirsty Brummel:

system, maybe application wise.

Kirsty Brummel:

Or you could be monitoring online in terms of what's actually being used,

Kirsty Brummel:

um, how the brand name that you've got, you know, is it being used out

Kirsty Brummel:

there, um, by other parties when they, when they shouldn't be using it?

Kirsty Brummel:

Is anyone else using the same name?

Kirsty Brummel:

Um, is there any sort of conflict in terms of the way that your brand name

Kirsty Brummel:

might be being used by another business?

Kirsty Brummel:

Um, so there's certainly ways, you know, you could monitor and watch, um, or you

Kirsty Brummel:

could do your own manual checking as well.

Kirsty Brummel:

You know, depending on maybe looking at the UK register and

Kirsty Brummel:

putting in, for example, your brand name and seeing what comes out.

Kirsty Brummel:

But, um, I mean I definitely, um, sort of recommend getting

Kirsty Brummel:

professional advice where possible.

Kirsty Brummel:

Um, just so you are covering off, you know, all the sort of relevant angles.

Vicki Weinberg:

That's really good advice.

Vicki Weinberg:

Thank you.

Vicki Weinberg:

Because I think a lot of us would be really tempted to say, well, I've

Vicki Weinberg:

registered and I'm, I'm protected.

Vicki Weinberg:

And then leave it at that.

Vicki Weinberg:

Um, and then perhaps you only find out something goes wrong

Vicki Weinberg:

when something really goes wrong.

Vicki Weinberg:

And, and let's talk a little bit about that actually Kirsty, because

Vicki Weinberg:

something I've seen, um, I've seen a few instances of this on social media.

Vicki Weinberg:

I actually had a lady on, I, come on my podcast, who this has happened to.

Vicki Weinberg:

Um, and the thing I wanted to talk about is when someone sort of copies, whether

Vicki Weinberg:

it's your products, your branding, um, so I've seen a few stories you

Vicki Weinberg:

probably have about bigger brands, maybe copying something that's the

Vicki Weinberg:

work of an individual or a small brand.

Vicki Weinberg:

What do you do when that happens to you?

Vicki Weinberg:

What steps would you advice someone takes?

Kirsty Brummel:

Yeah, so I mean, it can depend as to what is actually being done.

Kirsty Brummel:

Um, so for example, um, on the trademark side, you know, if you can see that

Kirsty Brummel:

maybe someone's copied your logo, um, and you've got that registered, um, then there

Kirsty Brummel:

would be the option to, um, basically contact, um, that business or individual

Kirsty Brummel:

to let them know about your registered trademark rights and that you've

Kirsty Brummel:

seen, you know, that they're basically using this logo in commerce and it's

Kirsty Brummel:

conflicting with your registered right.

Kirsty Brummel:

Um, and that you're giving them the opportunity to basically

Kirsty Brummel:

either stop using, um, or for example, they file an application

Kirsty Brummel:

to then withdraw that application.

Kirsty Brummel:

Otherwise you're going take further action.

Kirsty Brummel:

So it's whether you want to contact them yourself or again, I always recommend

Kirsty Brummel:

where possible to seek professional advice, and that's on the basis that

Kirsty Brummel:

it's always good to know and do a bit of research first as to what are

Kirsty Brummel:

the extent of the rights of the other business or individual as in, you

Kirsty Brummel:

know, sort of what are they doing and um, for example, maybe if it was a

Kirsty Brummel:

similar logo, it's checking that they haven't been using that for a long time.

Kirsty Brummel:

You know, like just independently and maybe their rights could actually be

Kirsty Brummel:

earlier than your own, so that you wouldn't want to contact basically

Kirsty Brummel:

another business only to find out actually they've got earlier registered

Kirsty Brummel:

or, um, so-called unregistered rights.

Kirsty Brummel:

Um, then you, for example, maybe like a brand name or a logo and

Kirsty Brummel:

that they could then counter that.

Kirsty Brummel:

So it's doing the research in the first place too.

Kirsty Brummel:

It's like, right, what, what are the rights that each, um, business

Kirsty Brummel:

has and when do they date back to?

Kirsty Brummel:

If you can find out that information first and then that sort of helps

Kirsty Brummel:

establish, you know, is this the right thing to do to contact them?

Kirsty Brummel:

Um.

Kirsty Brummel:

And there might be different ways to contact them.

Kirsty Brummel:

So, um, there's sort of, you know, you could do it through, um, an

Kirsty Brummel:

IP firm or through a, a firm like trademark where they're writing

Kirsty Brummel:

on behalf, on your behalf and, um, setting out your registered rights.

Kirsty Brummel:

Or it could be a business to business contact, um, and just, um, sort of taking

Kirsty Brummel:

a bit of a softer approach, so to speak.

Kirsty Brummel:

And, um, trying to sort of give them the chance, you know, to, to stop

Kirsty Brummel:

doing what the, what they're doing before then taking any further action.

Kirsty Brummel:

And I think it depends on who the businesses are, um, you know, like what

Kirsty Brummel:

size they are, um, what they're doing.

Kirsty Brummel:

And as to, you know, like deciding which route might be best to go down.

Vicki Weinberg:

That makes sense.

Vicki Weinberg:

Thank you.

Vicki Weinberg:

And what about for copyright issues?

Vicki Weinberg:

Would that be the same kind of process?

Kirsty Brummel:

So for copyright, um, again, um, definitely doing

Kirsty Brummel:

that sort of research piece.

Kirsty Brummel:

It's, you know, what is being copied, if anything.

Kirsty Brummel:

Um, then maybe, you know, for example, you've got a website and um, you've

Kirsty Brummel:

got certain materials like written, um, texts, and there's big chunks, you

Kirsty Brummel:

know, that have been copied, say by, I mean, hopefully not, you know, like by

Kirsty Brummel:

another business you can suddenly see.

Kirsty Brummel:

It's like, hang on a minute, that, that's all the text from my website.

Kirsty Brummel:

Um, then again, you know, I'll be checking, it's like, when

Kirsty Brummel:

was this other business set up?

Kirsty Brummel:

Um, can you see, um, you know, like when the domain name was

Kirsty Brummel:

registered, what, when this material might have been sort of taken over.

Kirsty Brummel:

Um, and then again, it's, it's establishing that in the first place

Kirsty Brummel:

to make sure, you know, you are right in basically contacting them and,

Kirsty Brummel:

you know, this is your material.

Kirsty Brummel:

And, um, you know, that you created something maybe like five years ago and,

Kirsty Brummel:

um, you've obviously, um, sort of in the right to be able to then ask them to not

Kirsty Brummel:

be copying and what has been created.

Kirsty Brummel:

Um, and again, you could either do that, um, you know, like

Kirsty Brummel:

through a professional firm.

Kirsty Brummel:

Or you could do it business to business again.

Kirsty Brummel:

Um, and sometimes, um, I think it's good to know who, you know, you are

Kirsty Brummel:

getting in touch with and what that business is like and, um, what the

Kirsty Brummel:

sort of outcome of that might be.

Kirsty Brummel:

Because, you know, as you've seen from some of the bigger cases, you know, like

Kirsty Brummel:

the m and s and, and, and even this Percy Pigs matter that's come up this week

Kirsty Brummel:

with this ice cream that, um, you know, sometimes you have to think as well about,

Kirsty Brummel:

um, sort of publicity and for example, if you send a cease and desist letter, is

Kirsty Brummel:

that going to end up in the public domain?

Kirsty Brummel:

Could there be some sort of negative publicity now around, depending on

Kirsty Brummel:

how you contact a, another business?

Kirsty Brummel:

But at the same time, it's like that absolute importance of

Kirsty Brummel:

you've, um, basically created something which has copyright.

Kirsty Brummel:

You are then, um, within your right to protect that work.

Kirsty Brummel:

And obviously you don't want that being sort of copied and disseminated, you

Kirsty Brummel:

know, like throughout the internet without your, um, permission.

Kirsty Brummel:

Um, so yeah, it's, um, it can be a sort of tricky one, you know, like to work out the

Kirsty Brummel:

best strategy and that's why again, you know, going sort of via a, a professional

Kirsty Brummel:

firm can be a good option where budget's available, just because then they can

Kirsty Brummel:

suggest, you know, like the different options and what might be the best route.

Vicki Weinberg:

That makes sense.

Vicki Weinberg:

Thank you.

Vicki Weinberg:

Yeah, I feel, I feel like getting professional advice is

Vicki Weinberg:

key here actually, because it seems really tricky to navigate.

Vicki Weinberg:

Um, and, and you might possibly say the same to my next question, which is, what

Vicki Weinberg:

do you do if the opposite happens and somebody contacts you and says, you've

Vicki Weinberg:

infringed on my copyright or my trademark?

Vicki Weinberg:

Or let, let's assume it's copyright because let's, let's say that we've all

Vicki Weinberg:

done our checks before we've registered the trademark, and that's all fine.

Vicki Weinberg:

If a company comes to you and says, actually, you've

Vicki Weinberg:

infringed upon our copyright.

Vicki Weinberg:

Um, we sell a t-shirt that looks like this, and now you are selling

Vicki Weinberg:

a t-shirt that looks like this, what do you do if that happens?

Kirsty Brummel:

Um, yeah, so if it was like the, the sort of design drawing,

Kirsty Brummel:

you know, like on, on a t-shirt or, um, maybe like copied a logo that, you know,

Kirsty Brummel:

had copyright protection in it then I would definitely in that way round, um,

Kirsty Brummel:

I think where possible, and again, where budget allows seeking some professional

Kirsty Brummel:

advice first off, would be important because it would be to establish are you

Kirsty Brummel:

actually, um, infringing that copyright?

Kirsty Brummel:

Um, you know, is there an issue at all here?

Kirsty Brummel:

Or if not, can you then basically push back and say, you know, you've

Kirsty Brummel:

taken legal advice and actually this isn't copyright infringement and

Kirsty Brummel:

you know, you're not going to be stopping doing what you are doing.

Kirsty Brummel:

Um, on the other hand, you know, if there is a conflict and the advice is,

Kirsty Brummel:

you know, this, this could potentially be an issue in terms of infringement,

Kirsty Brummel:

um, then you might want to think about, um, whether there's any amendments,

Kirsty Brummel:

for example, you could make in terms of like a design drawing or a logo or maybe

Kirsty Brummel:

coming up with something new, um, um, um.

Kirsty Brummel:

Worst case scenario, you know, like having to withdraw maybe certain products.

Kirsty Brummel:

Um, but again, I think where you can, it's good to get that advice because if

Kirsty Brummel:

you sort of rush in and reply and, um, you know, without maybe like knowing

Kirsty Brummel:

the facts, then it could potentially be detrimental as to, you know, the

Kirsty Brummel:

sort of escalation or, or the outcome.

Kirsty Brummel:

Um, so yeah, again, we're possible advice.

Vicki Weinberg:

And do we need to really panic if this happens?

Vicki Weinberg:

Are we going to get massive fines or, or anything like that?

Kirsty Brummel:

Usually I would say, um, try not to panic, you know, if you

Kirsty Brummel:

received a cease and desist letter, um, normally it's a, a pretty sort of

Kirsty Brummel:

standard things, you know, that, that IP lawyers might do, you know, in terms

Kirsty Brummel:

of, um, on, on behalf of their client.

Kirsty Brummel:

Um, as an initial action, sending the cease and desist letter out, um, normally

Kirsty Brummel:

there's a period of time given to maybe like withdraw, um, an application if

Kirsty Brummel:

that's what you filed or, you know, to stop using commerce as a worst case

Kirsty Brummel:

scenario, um, within, within a certain period of time, but also within that

Kirsty Brummel:

period of time that you could seek advice and then sort of get a reply sent.

Kirsty Brummel:

Um, you know, maybe like countering what they've said.

Kirsty Brummel:

Um, usually, um, most businesses are not looking for a big fight or,

Kirsty Brummel:

you know, like, as a, a court action would be an absolute last resort,

Kirsty Brummel:

um, and worst case scenario normally.

Kirsty Brummel:

Most disputes don't actually come, you know, like to a court act.

Kirsty Brummel:

And normally, hopefully there'd be a way to try and resolve the matter.

Kirsty Brummel:

Um, for example, um, if there's any sort of commercial differences between parties,

Kirsty Brummel:

sometimes things can be resolved on the basis of those commercial differences,

Kirsty Brummel:

or there might be a compromise position where you might agree, for example on

Kirsty Brummel:

the trademark side, maybe to use a, a logo or brand name in a specific form.

Kirsty Brummel:

Um, not use, um, you know, like sort of form or stylization

Kirsty Brummel:

that the other business has.

Kirsty Brummel:

Um, and different things that could be agreed upon in what you'd call a

Kirsty Brummel:

coexistence agreement so that parties, you know, like in coexist side by side, but

Kirsty Brummel:

maybe there's some restrictions on what you are doing depending on who's got the

Kirsty Brummel:

stronger and earlier rights, so to speak.

Kirsty Brummel:

Um, so there's definitely ways, you know, to um, hopefully maybe have

Kirsty Brummel:

a friendly settlement if there's any room for that or, you know, to

Kirsty Brummel:

withdraw, um, an application or stop using in commerce if you have to.

Kirsty Brummel:

Um, and, um, it depends, you know, like in terms of who the other business

Kirsty Brummel:

is as to whether they um, now for example, they might ask sometimes for

Kirsty Brummel:

their legal fees to be covered and, um, um, any sort of items that have

Kirsty Brummel:

already been sold to be withdrawn and, um, you know, they might sort of ask

Kirsty Brummel:

for certain conditions surrounding, um, resolving like a cease and desist.

Kirsty Brummel:

Um, but hopefully, you know, these sort of things are, um, the sort of the worst case

Kirsty Brummel:

scenario and in definitely the court case would be the absolute worst case scenario.

Kirsty Brummel:

Okay.

Kirsty Brummel:

Yeah.

Kirsty Brummel:

So in most cases, hopefully it'll all work out one way or another.

Vicki Weinberg:

Thank you.

Vicki Weinberg:

Well, the main message I'm getting is don't panic, so that's good.

Vicki Weinberg:

So nobody panic.

Vicki Weinberg:

Okay, thank you Kirsty.

Vicki Weinberg:

I've just got a few more questions before we finish up.

Vicki Weinberg:

Um, my next one didn't, I wasn't really sure where to fit this in.

Vicki Weinberg:

I'm going to ask you now at the end if that's ok.

Vicki Weinberg:

So often, um, we all see little circles, you know, in text and there's either

Vicki Weinberg:

a TM in a circle or an R in a circle.

Vicki Weinberg:

Could you please explain, um, what these actually mean?

Vicki Weinberg:

I'm guessing TM is trademark, but, um, I'll let you tell me,

Vicki Weinberg:

I don't know what R stands for.

Vicki Weinberg:

Would you mind letting us know what these are, um, and

Vicki Weinberg:

when they can be used, please?

Kirsty Brummel:

Yes, of course.

Kirsty Brummel:

And this is like a really good thing to cover, um, because I think a lot

Kirsty Brummel:

of businesses and, um, the people out there, you know, like are still

Kirsty Brummel:

wondering what are these symbols mean.

Kirsty Brummel:

So in terms of the R in a circle, the R means registered, and you can use the

Kirsty Brummel:

R in a circle when, for example, you have a trademark registration in place.

Kirsty Brummel:

So in the UK, once you have that registration, you could be using the R in

Kirsty Brummel:

a circle next to your brand name or logo, depending on what you've had registered.

Kirsty Brummel:

Um, and you basically can't use the R in a circle if you don't, don't have

Kirsty Brummel:

that registration, um, in place yet.

Kirsty Brummel:

Um, so it's actually would be, um, you know, like a legal requirement

Kirsty Brummel:

to only use it, you know, once you've had the registration.

Kirsty Brummel:

Whereas the TM, which means trademark symbol.

Kirsty Brummel:

That can be used at any time, um, next to your brand name or logo.

Kirsty Brummel:

So even if you haven't filed a trademark application, you could

Kirsty Brummel:

still, for example, be using the TM in a circle, or if you've got an

Kirsty Brummel:

application in place, you could use it.

Kirsty Brummel:

Or even if you've got a registration, you might opt to use the TM in a

Kirsty Brummel:

circle rather than the R in a circle.

Kirsty Brummel:

And that might be, um, for example, in cases where your, um, maybe like,

Kirsty Brummel:

um, selling products in different markets, maybe let's say like the

Kirsty Brummel:

UK and then across the EU, and you don't have trademark registrations

Kirsty Brummel:

in place in certain countries.

Kirsty Brummel:

So when you have your packaging, it might be easier just to use the TM in a circle

Kirsty Brummel:

across those markets because um, then that doesn't, um, have any issues, you know,

Kirsty Brummel:

like in terms of using the R in a circle where you don't have registrations yet.

Kirsty Brummel:

The other thing I would say is, um, the rules can vary slightly depending

Kirsty Brummel:

on the countries of interest.

Kirsty Brummel:

So it's always good to check, you know, like locally outside of the UK

Kirsty Brummel:

as to what those, um, rules might be.

Kirsty Brummel:

Um, but in the UK anyway, it's um, more easygoing in terms of the T in the circle

Kirsty Brummel:

and then obviously only using the Rs in circles once you have a registration.

Vicki Weinberg:

That makes sense.

Vicki Weinberg:

Thank you.

Vicki Weinberg:

And I guess if you're not sure, again, this is another area you can get some

Vicki Weinberg:

professional advice on if you're not sure which you should be using where.

Vicki Weinberg:

Oh, thank you so much Kirsty.

Vicki Weinberg:

So I've got one final question to end on, if that's okay.

Vicki Weinberg:

Which is, what is your number one piece of advice when it comes to

Vicki Weinberg:

protecting your intellectual property?

Vicki Weinberg:

So what's the one thing you want people to, um, take away from this?

Kirsty Brummel:

Um, yeah, I would just say, um, well, just a couple of things.

Vicki Weinberg:

That's fine.

Kirsty Brummel:

If that's okay.

Kirsty Brummel:

But one of them would be, um, to do your research at the beginning as

Kirsty Brummel:

to, you know, depending on what the IP is, so if it's, um, a trademark

Kirsty Brummel:

that you want to try and register.

Kirsty Brummel:

Is your brand name or logo, um, distinctive enough to

Kirsty Brummel:

register in the first place?

Kirsty Brummel:

Trying not to opt for descriptive terms where possible.

Kirsty Brummel:

So coming up, you know, with an invented brand name if possible.

Kirsty Brummel:

Um, something unusual that would stand out and be unique so that you have that

Kirsty Brummel:

biggest bubble of protection possible, basically surrounding your trademark.

Kirsty Brummel:

Um, and also, um, making sure where, where budget allows to do that, searching

Kirsty Brummel:

before you file an application or before you start using in commerce to

Kirsty Brummel:

try and make sure you're not infringing anybody else's registered rights or

Kirsty Brummel:

that there could be any, um, passing off issues in terms of use of a brand

Kirsty Brummel:

name over time where goodwill's been built up, for example, in the UK.

Kirsty Brummel:

Um, and then the same, you know, with patents as well is just making sure, you

Kirsty Brummel:

know, um, an invention for example is patented people in the first place before

Kirsty Brummel:

you would then part a paten application doing your freedom to operate search

Kirsty Brummel:

before filing as well where budget allows.

Kirsty Brummel:

Um, and then the same on the design side as well, just making sure that it,

Kirsty Brummel:

um, fits the criteria in terms of being new and having individual character

Kirsty Brummel:

and doing any searching where you can.

Kirsty Brummel:

Um, so it basically puts you in a good position, you know, before you start

Kirsty Brummel:

doing any filings and, um, to, to sort of help you with the, um, obtaining rights,

Kirsty Brummel:

but also not wasting money, you know, on finding applications where you might

Kirsty Brummel:

not be able to obtain the registration.

Vicki Weinberg:

That's really helpful.

Vicki Weinberg:

Thank you so much, and thank you for everything that you've shared with us.

Vicki Weinberg:

It's been really useful.

Kirsty Brummel:

Thank you.

Kirsty Brummel:

It's been brilliant talking to you.

Vicki Weinberg:

Thank you so much for listening right

Vicki Weinberg:

to the end of this episode.

Vicki Weinberg:

Do remember that you can get the full back catalogue and lots of free resources

Vicki Weinberg:

on my website, vicki weinberg.com.

Vicki Weinberg:

Please do remember to rate and review this episode if you've enjoyed it,

Vicki Weinberg:

and also share it with a friend who you think might find it useful.