Other Services

Our experienced trade mark practitioners can attend to your intellectual property-related cyber issues, which includes dealing with domain name disputes.

The registration of a domain name, without corresponding trade mark protection, gives no right to the name as a trade mark and very little right to stop others registering and using a similar domain name or trade mark.

At Trade Mark Wizards ® we assist with –

• Conducting clearance searches for new domain names;
• Dealing with the registration of domain names in the UK and worldwide;
• Providing a domain name watching service to reporting on similar marks in the Cyber world;
• Commencement and conduct of domain name disputes;
• Maintenance and renewal of domain names;
• Transfer and acquisition of domain names from third parties.

Cyber-Squatting (Domain Name Hijacking)

Where an individual or company has registered a domain name that incorporates your brand name, trade mark or company name without your consent, our experienced trade mark practitioners can help you secure the transfer of the domain name back to the rightful owner.

Whether the disputed domain name has been registered by a distributor, a competitor, a company promoting or selling unrelated goods or services or a company using sponsored links to profit from the domain name, we can ensure that it is transferred to its rightful owner: You.

Where possible, we can seek to obtain the voluntary assignment of the domain name to you, or, where necessary, lodge a complaint at ICANN or Nominet to secure the compulsory assignment of the domain name. Our experts are well-versed in ICANN’s Uniform Dispute Resolution Policy and Nominet’s Dispute Resolution Policy and, in the past, have secured the domain names for many companies.

Typo-Squatting

Where an individual or company has registered a domain name that is identical with your domain name, save for the presence of a typographical error or different top-level domain, we can help you secure the transfer of the domain name.

Whether the domain name has been registered to redirect traffic to a competitors website, to profit via sponsored links, to profit by redirecting traffic to your website via an affiliate link, to profit from adware, to facilitate illegal activity (such as phishing or the installation of drive-by download malware) or to offer it for sale to you at an inflated and unreasonable price, we can ensure that it is transferred to you.

Reverse Domain Name Hijacking

Occasionally, trade mark owners may attempt to obtain a sought-after domain name wrongfully by using Domain Name Hijacking laws and policies in bad faith, in order to deprive the prior domain name registrant of his legitimately obtained rights in the domain name. This practice is known as Reverse Domain Name Hijacking and is prohibited by the very same domain name hijacking laws and policies.

Where an individual or company has brought formal proceedings against you or your company or have threatened to bring formal proceedings on the basis of a registered trade mark, the contention being that you have breached domain name hijacking laws or policies, we can defend you against these claims and, if formal proceedings are initiated, have these claims denied.

Domain sniping or Domain drop catching

The practice of domain sniping, which involves the registering of a domain name immediately after the original registration of that domain name has lapsed or expired, can have a devastating effect on a business. The original domain name holder may have derived a commercial income from the website, conducted business through the domain’s email accounts, promoted the goods or services from the website and developed an online reputation via the website. The original domain name holder’s reputation might be further damaged if the subsequent registrant resolves to use the domain name to facilitate illegal activity (such as phishing) or to upload content that contradict the principles, standards and values of the original domain name holder.

As domain name specialists, we can advise you on the best ways to avoid domain sniping, provide you with safeguards that you need to protect against domain sniping and clarify the process of domain expiration.

Brandjacking

Where an individual or company has acquired or assumed your, or your company’s, online identity for the purposes of maliciously damaging you or your company’s reputation or taking advantage of your business brand equity, we can assist you in taking legal action against the parties responsible for the infringement.

Brandjacking can have devastating economic consequences. We can advise you on how to avoid brandjacking, to a considerable degree and we can act to have the infringing content removed from the various social media or Web 2.0 sites.

Enforcing your Trade Mark rights effectively is extremely important in protecting your business, goodwill and reputation. Counterfeiting nowadays is on the increase as ever before and as such presents a global threat to Trade Mark owners and their power to capitalise on and take advantage of the investment into their brand.

Counterfeiting results in lost revenue, destroys consumer confidence in a brand, tarnishes a company’s reputation and can also present huge risks to the health and safety of consumers that buy products assuming they have been place on the market by the rightful Trade Mark owner.

Our firm can assist clients in a wide range of industries to handle anti-counterfeiting by providing and designing bespoke cost-effective strategies to seek out and catch counterfeits at the EU border and combat criminals within the relevant market. We have a network of trusted local associates in various jurisdictions around the world to help you beat counterfeiting.

Trade Mark Wizards® is committed to helping you make the most out of your brand by capitalising on your investment and ensuring your trade mark protection is broad and strong enough to provide you with sufficient opportunities to enter new markets through the licensing of your brand.

We can also sell or transfer trade marks to connected or unrelated parties through assignment procedures.

Licensing

Licensing is one of the best and most advantageous ways of exploiting and benefiting from your intellectual property rights by creating additional revenue streams for your business. Having the right trade mark protection in a broad range of classes connected with your business and industry means you can reap rewards by licensing your own rights to others.

Protecting your trade mark rights in classes that relate to the future expansion of your business means that nobody can use your mark to reap where they have not sown, without obtaining a licence from you in return for a relevant licence fee and regular royalty payments. Obtaining wide protection also gives you the confidence and motivation to inject investment into your brand with the security that no-one can take advantage of your efforts without your consent.

Negotiating and concluding licence agreements with third parties means that you ensure the goodwill in your brand name, which is generated through the exposure by third party use, is still owned and controlled by you. Also, allowing people to use your brand in the classes you are not yet exploiting yourself saves your trade mark from being vulnerable to a cancellation action on the grounds of non-use.

Merchandising

Merchandising can be seen as the practice of using the branding or imagery of one product or service in connection with the sale of another, often unconnected, product or service. Opportunities to exploit the commercial potential of well-known brands through merchandising are practically endless.

The original rights holder may, of course, decide to apply his branding to his own products. However, most of the time trade mark owners will grant a licence of those rights to third parties to produce merchandising goods and apply the trade mark owner’s branding to its products. In the latter case, a merchandising agreement, which is essentially a form of intellectual property licence, will need to be concluded between the parties.

Assignments

A mark may be assigned with or without the goodwill of a business in relation to which it has previously been used. Furthermore, partial assignments are also possible which are limited to certain goods or services for which the mark is registered or in relation to use in a particular manner or territory.

Transactions

Trade Mark Wizards® will be pleased to assist with the negotiation, preparation, drafting, implementation, recordal and enforcement of any such licences, merchandising contracts and assignment documents, anywhere in the world.

Trade Mark Wizards® understand that the development of a franchise is an extremely challenging exercise which needs a wealth of practical experience.

We work closely with prominent franchising experts who can study your business and its market and easily identify any modifications which may be required to ensure a smooth transfer to a profitable franchise concept.

Franchising is the granting of a licence that will entitle your franchisees to trade under your trade mark, receive comprehensive training and benefit from ongoing support in the operation of a proven business concept.

Franchising also provides an effective route to building national and international networks without requiring the management infrastructure, time and capital investment of company-owned expansion.

If you believe that your successful business model is worthy of replication, we can provide definitive, clear advice and guidance to help you build a prosperous business through the successful development of your franchisees.

Our franchise consultants provide a wide range of specialised services and have the full range of skills and expertise which are dedicated to assist businesses expand and become a success through franchising.

In particular, our franchise consultants use the power of today’s technology and franchise development techniques to work towards franchising success, whilst incorporating the best strategies for expansion and establishing franchise relationships to ensure that all parties involved prosper.

Trade Mark Wizards® offers a range of strategically focused trade mark portfolio auditing and strategy services.

These services range from initial critical and commercially conscious reviews of the type of protection that could enhance and support your business through to the cost-effective management of the process of creating, searching, protecting, using, enforcing and defending your rights.

We also assess the potential for third party rights to threaten your business activities and the related commercial risks and consequences that a threat may follow.

Our portfolio audits allow us to identify where our clients’ strengths and weaknesses lie in terms of their legal protection. This then allows us to focus on the areas of our clients’ portfolio that are exposed, in order to add value to their business.

Some particular strategic services we offer are:
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• Auditing and health checking
• Advice on Freedom to Use
• Infringement and validity opinions
• Due diligence
• Portfolio management
• Licensing advice
• Identifying new licensees
• Enforcement
• Coordinating foreign litigation
• Acquisition and sale
• Retainers

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Trade Mark portfolio management

Trade Mark Wizards® boasts the most cost-conscious portfolio management service on the market, handling renewals, oppositions and new applications in a clear and responsive manner. Our trade mark practitioners have experience in managing the portfolios of some of the most well-known and world-famous companies.

What our clients appreciate most however, is the fact that they have a consistent point of contact with a reliable, trusted and friendly trade mark attorney whom they can speak to, without charge, regarding any trade mark concerns that they have.

Trade Mark Wizards® secondments are designed to enable directors and general counsel to make efficient resourcing decisions connected with brand protection related issues, where a full-time trade mark attorney is not needed.

We ensure that a temporary in-house transfer results in effective assistance with complex short-term and long-term projects. It also enables us to obtain a greater understanding of a client’s business and legal needs, laying the foundation for a continuing working relationship.

A Trade Mark Wizards® secondment is the sensible solution for addressing temporary in-house legal assistance for intellectual property matters to protect, manage and enforce such intangible rights on a global scale. Our aim is to gain a real insight into the client’s operations and objectives in order to develop a greater understanding of the demands and needs of the business and its legal and marketing function.

Our secondees have previous experience of bridging the gap between the marketing and legal function of an organisation, ensuring that commercial and marketing decisions are subject to rigorous due diligence and that new and existing brands are adequately protected and guarded against dilution. Our approach to in-sourcing rejects the hourly billing model and fees are negotiated on a case by case basis, depending on the needs of our client.

We understand that the demands and pressures placed on an in-house legal team require a diligent approach in prioritising tasks and managing legal risk. We ensure intelligible answers and strategies by delivering and presenting advice in a clear, comprehensible and commercially focused manner, tailored to the user’s familiarity with the law.