Reducing trade mark costs in recessionary times

07 May 2009
In tough economic times it’s even more important to manage trade mark budgets. Marcus Woodhouse outlines some common strategies that trade mark applicants can adopt to minimise costs at each stage in the process.

Trade mark selection

Begin by coming up with a number of potential trade marks.  When choosing potential marks it’s always preferable to choose distinctive marks. Descriptive marks increase the overall registration costs, and may not be registrable.  The same consideration applies for trade marks which are geographically significant for the products, or which other traders are likely to want to use in the normal course of trade for their own products.


Availability searching

When taking a trade mark global, begin by conducting less expensive identical, or near identical, searches for the most desirable mark in your main market.  This will often locate any obvious obstacles. It may save the cost of conducting full searches in each territory.

Once you’ve got a mark which appears to be available based on the identical searches, you can then begin the full search process in your main markets.  If the mark is blocked in any main market, you should choose the next most desirable mark and begin the process again.

Once you have a mark that is available in your main markets (or any issues are manageable), you can move onto the next most valuable markets and after that search the markets on your “nice to have” list.  Again, if you’re blocked in any of these markets and cannot manage the issues, or live without that market, you should start again with your next preferred mark. 

There are a number of searching strategies and we can create one for you based on the circumstances. 


Trade mark filing

File an application in your home country first.  Provided you file overseas applications within six months of the first filing, most countries allow you to keep the priority date of the first filing for the overseas filing as well.  Delaying the overseas filing costs while maintaining your legal position buys you valuable time to further investigate markets and decide the best way to proceed.  It’s also useful from a budgeting perspective. 

Choose the mark to be filed, and the relevant classes, very carefully.  The number of trade marks filed, and the number of classes covered determine the cost.  A balance needs to be struck between the level of protection achieved and the cost.  You might choose to protect the most important component of your mark first and then stagger additional protection over the next two to five years. 


Examination stage

Make strategic decisions about examination at the time of filing.  If it is likely that you will need to provide ‘evidence of use’ of the mark before the registration will be granted, begin collecting that evidence as soon as possible. Avoidable extensions of time are a waste of money.


Renewals

When registrations come up for renewal it’s often easier to simply renew them. However, its best to critically analyse the value of each registration as it comes up for renewal. It’s an easy choice to renew when it is a critical mark in a critical market and covering a critical class.  But things change, and it might be advisable not to renew a registration in some markets, or to reduce the classes covered.

This article was published in IPNewz, May 2009.

  • IPNews