Category Archives: Help & Advice


Oh burger. McDonalds didn’t prove use of the BIG MAC trade mark in Europe.

Burger, big mac

Do you know what a Big Mac is?

Do you know which company produces them?

Do you know that they are sold in Europe?

Chances are the answer to all those questions is a resounding yes. Even if, like me, you’ve never actually eaten one.

So it might come as a bit of a surprise if I tell you that McDonalds weren’t able to prove that they have used the Big Mac trade mark in Europe. As a result, the European Trade Mark Office have decided to cancel the trade mark registration.

Cancelling a trade mark

Once a trade mark is over five years old, it’s generally assumed that the owner will have started using it. If it hasn’t been used, and there’s no good reason for that, it can be cancelled. If it has been used, the owner can be asked to prove genuine use – that proof needs to be for each item covered by the trade mark registration, show more than just “token” use, and in the case of an EU-wide trade mark, the use must be in a significant proportion of the EU.

Supermacs, an Irish burger company, applied to cancel the EU trade mark registration for BIG MAC. McDonalds had to prove that they had in fact used the trade mark, in order to keep the trade mark registration.

You wouldn’t think that would be too tricky, I think we can all agree that it’s a pretty well-known brand throughout the world. So what was the problem?


McDonalds filed evidence which included 3 affidavits from employees of the company; samples of packaging; print outs from various national McDonalds websites from within EU countries; copies of menus showing the Big Mac offering; a print out from Wikipedia about the Big Mac.

The decision (which you can read as part of the official file here) reviews the evidence submitted and explains a little about why this wasn’t sufficient.

For a start, almost everything was internal. The EU IP Office generally like evidence to be independently verified and give independent evidence more weight.

Secondly, they were unimpressed that there wasn’t some data to support the evidence submitted. Copies of websites are all very well, but how many people visited the website? Where did those visitors come from? This is information that most businesses can get hold of relatively easily.

Thirdly, Wikipedia is not a source of evidence in itself because it can be amended by any of its users, the content can’t be relied on.

What can we take away from this?

If you’re in a situation where you have to defend your trade mark rights, evidence is key. I would always recommend that good record-keeping throughout is important so that if this crops up, you’re not faced with a monumental task to gather information and evidence.

Know your figures. Website hits, sales volume, sales value, market share, advertising spend, are all important. Be able to break those down by country, and by year.

Evidence. Save copies of any adverts that you place and know the date you placed them/how long they ran for. Alongside that, know the average circulation figures of those publications in the relevant countries, or website hits for those sites, or footfall in the areas for your posters. You should know this because presumably it was a driving factor in your decision to place the advert in the first place. If you don’t know it, the company you paid to do the advertising, or for the advertising space, should know this and be able to give you that information.

Press coverage. Keep copies and details of all press mentions. Again, circulation figures are handy to know. If people are talking about your brand, it’s raising awareness independently from you. For example, since 1986 The Economist has produced a “Big Mac Index”, using the price of Big Mac burgers in various countries as a way to compare the economies of those countries. Evidence from these kind of independent sources is really valuable.

Chances are you are already sitting on this information within your company, but it might be handled by various departments, or just in different folders. I would recommend finding a way to join this up centrally. And if you can’t, chat to your legal team about a way to keep this centrally for you.

If you’re a small company, this still applies. Would you be able to pull together that level of information on your brand if you were asked to? And could you afford the time to do this as a standalone task?

If you need some help with evidence gathering, streamlining your evidence collection process, or creating a process in the first place, please get in touch.

How to use ™ and ® to identify your trade mark for others


If you’ve heard me go on (and on!) about using ™ and ® to show your trade mark but you can’t work out how to actually do that and end up writing “TM” and “R-in-circle” here’s how:

On an iPhone, they can be found hidden deep in the emoji keyboard (shown in the picture).

On a laptop/computer with a keyboard, the keyboard shortcut is CTRL+ALT+T for ™ and CTRL+ALT+R for ®

So please use them. They’re a great deterrent, and make you look more professional when used correctly.

Remember, you can only use ® if your trade mark is registered. Otherwise, use the ™.

Twitter and Instagram both allow you to use ® and ™ in your Profile Name (not in the actual @handle).

Facebook won’t let you use ® or ™ in the Page Name for some unclear reason. Their guidance on Page Names is here

Hope you’ve found that useful. Get in touch if I can help you protect your trade mark or if you have any questions.

trade mark overseas

Taking your trade mark overseas – what you need to consider

Depending on your business type, you might have the opportunity to take your trade mark overseas. This could come quite quickly in your business, or might be a step that you consciously take after trading in the UK for a few years first.

What does trading overseas mean?

When I say take your trade mark overseas, I don’t specifically mean that you need to set up a physical office or shop to be active. How about if your products are stocked by someone in another country. Maybe you sell online and find that you have an increasing number of sales in a particular country, or group of them. Perhaps you manufacture your products and use a factory overseas to do that. Do you visit and exhibit your products at international trade shows. All of those situations (and countless others) result in your business having an interest outside of the UK.

Brexit has meant that there are some unanswered questions about what will happen to any trade mark rights you have at a European level (see my blog post here).

However, several companies don’t have any rights beyond the UK. This means that you could be vulnerable to all kinds of issues when you take the trade mark overseas.

So what should you think about doing to protect your trade mark overseas?
  • Check that the trade mark is available. You should look at whether there are possible conflicts with existing companies. And do this in each country of interest. Someone else might have earlier rights than you. Just because you are an expanding business, doesn’t mean you have automatic rights to use your trade mark overseas.
  • If you are manufacturing in another country, you should have trade mark protection there. The most common trade mark issue with overseas manufacture is that products are copied in that country, and the company has no rights there.
  • Protect the trade mark in each country you trade in. You might have a minimum trade rule for each country. So if you sell over a certain value in a particular country, then it makes the “hit list”. You should review this each year and every time a new business milestone occurs, such as securing a new stockist.
  • If you’re attending trade shows overseas be aware of how far and wide your brand is travelling. Stockists, manufacturers, distributors (and those who would like to be your stockists, manufacturers and distributors) might decide to protect your trade mark “for you”. This can be a nightmare for investors as well as taking action in case of trade mark enforcement issues. Best to get in there first and be the clear owner of your trade mark.

If you would like more information or would like to discuss how I can help you protect your trade mark everywhere that matters to you, please get in touch.

good trade mark

What makes a good trade mark? Branding advice versus trade mark attorney advice.

There’s lots of debate about what makes a good trade mark. And the answer is that it depends what you’re trying to achieve with it. And who you ask/who is asking!

Branding/marketing advice for a good trade mark is likely to be:

From a branding perspective a good trade mark will be memorable as the main thing. You also want it to be clear to your customers who you are, as well as being clear about what you do/offer. Most of all, you probably want it to stand out from the crowd. In addition, I know some people think that it’s a great compliment to a brand if it is used frequently, or becomes synonymous with your product or service. Who doesn’t say “I’ll Google it” when they actually mean “I’ll use an internet search engine to find that out”.

Trade mark attorneys will say that a good trade mark:

Is also memorable and stands out from the crowd. Also you want to be unique in your business area. You don’t want to describe exactly what you do – so neither “Your Local Accountant” or “Get Mums Fit” would be considered a good trade mark from that point of view.

Ideally, you want your trade mark to be able to be registered. So a trade mark attorney’s advice about what makes a good trade mark will be that you need to choose one that will satisfy the requirements for registration. The Examiner at the trade mark office will decide if it can be registered as a trade mark. This means that they look at;

  • Whether it can identify one business from another.
  • That it doesn’t describe the goods/services offered.
  • That it is not customary within the trade/industry.

You also need to make sure that it doesn’t conflict with anyone else’s existing trade mark(s).

These are all things to think about when choosing a name for your business or product range. If you need any help with choosing a new name, rebranding, or protecting your existing trade mark, please get in touch.

Trade mark registration – what does it give me?

Trade mark registration seems to be on lots of people’s “to do” list. For most businesses a trade mark is a fair chunk of investment, especially in the early stages. Lots of people aren’t really clear what a trade mark registration gives them. And just as importantly, what it doesn’t. As a result, it often gets overlooked on that “to do” list.

So here’s a quick run down of some general pointers* about what kind of benefits and security you get from having a trade mark registration.

What you get with a trade mark registration:
  • First of all, you get the presumed right to use the trade mark. In the country it’s registered in. On the goods or services it’s registered for.
  • Then you also have the right to stop someone else from using the same, or similar trade mark. In the country you have it registered in. If they are using it on the same or similar goods or services to the ones you have it registered for. And there is a likelihood that customers will be confused.
  • There’s the increased ability to ask for investment because you can legitimately say that you own the brand. Think of Dragon’s Den – the first question they ask is “do you own it”.
  • You can license it to other people to use. Think of franchises, spin-off product ranges, collaborations.
  • The ability to use it to raise finance for your business, e.g. by mortgaging it.
  • Also the right to sell the trade mark as part of your business.
  • You can use the ® symbol which tells other people that your trade mark is registered and warns them about your existence. A great deterrent.
  • It can be used to object to similar domain name registrations that contain your trade mark, or something similar.
  • You have the ability to use it to stop counterfeiters.
  • Also, you can use it to register with customs authorities to help prevent the importation of counterfeit goods.
What you don’t get from a trade mark registration:
  • Global protection. Registered trade mark rights are restricted just to the countries where you have a registration. If it’s not registered in that country, you’re not protected there.
  • Every type of product or service is protected. Unless you’ve got a registration for them all. There is no “catch all” term like “merchandise”, you have to be specific.
  • Other people copying your business idea, or simply running the same type of business (there are lots of clothes shops in the world for example). So long as they are using a different name, brand etc your trade mark registration won’t be able to stop them. Even if you are the first to the market.
  • You won’t be able to stop people using descriptive words. For example, “Bargain Books” can still be used by everyone else to describe their bargain books, even if you have, say, a logo version of that registered.

If you have any questions, or would like help protecting your trade mark, either in the UK or overseas, please get in touch.

*Not all countries have the same laws, these are general pointers from a UK and EU perspective. If you have a query about a specific country please get in touch.

When, and why, should I get a trade mark protected?


Things have been a bit quiet over here on the blog. It’s been a hectic few months with lots of lovely new clients joining us, as well as a holiday, a birthday and the initial stages of a house move, busy busy!


Inspired by this overwhelming busy-ness, it got me thinking about how hard it is to know what to do first when you’re setting up a new venture; and I’m the first to admit that getting your trade mark protected isn’t quite top of the list in terms of exciting things to do (like actually launching a product, getting your website done etc).

So when should you look at getting trade mark protection?

The answer is as soon as possible.

Why bother?

Having a trade mark registered gives you the presumed right to use the name to trade under. You don’t get that from your domain name, your logo or your article in the local magazine.

It also gives you the right to stop others from using the same, or a confusingly similar, name for the same business. This bit is important if you think you might be susceptible to those “inspired competitors” trying to encroach and pinch your brand.

But it seems like a lot of money to spend.

The costs are modest for a UK trade mark, and trade mark rights last for 10 years. Think of it as insurance for your brand name. It will be less than you spend on marketing, or website development, or even branded stationery over the same period.

I haven’t had any issues yet and I launched ages ago.

If you’ve been trading for a while, you’re not too late – it’s always a good idea to get trade mark protection no matter how long you have been trading. Trading for a while will have given you some reputation rights, but in practice these are hard to enforce, expensive to enforce, and likely to be limited to the geographical area you’ve got the reputation in.

You would say that, you’re a trade mark attorney.

I appreciate that this advice will seem biased. But bear in mind I’m not insisting you use a trade mark attorney to help you protect it – although there are lots of good reasons why you should here – seeing businesses adequately protect their brands will always make me happy, even if I haven’t helped them directly.

So, go forth and register your trade marks. And if you need some help, give me a shout!

Small Business Saturday

Small Business Saturday – Inspire Series

The lovely folk at Small Business Saturday have asked me to run a workshop for their even lovelier small businesses. That’s everyone with a small business by the way. No matter what stage you’re at.

You should know already that I’m quite keen on protecting brands and making sure that businesses are getting the most out of theirs. This workshop will cover everything from how to choose a name, or indeed a rebrand, to how to use it to make sure it remains yours, and also how to protect it to hopefully stop other people pinching it. There should be something for everyone in there although it’s mainly aimed at businesses who perhaps haven’t yet had any advice in this area or taken any steps to protect their brand yet.

The date is set (Thursday 29 September), the invites have been sent (please consider this yours) and now we wait patiently for the RSVPs. Well, the tickets to be reserved. Last time I was this excited about RSVPs was for my wedding – no pressure!

The tickets are free. You get to come and see me in person. The venue, Somerset House in London, is fantastic. Did I mention that the tickets are free? Well they are.

If you can’t make it in person, or if you miss out on a ticket (places are limited), you can follow along online. We’ll also have a live Twitter Q&A as part of the session – make sure you’re following us both @stanmoreip and @SmallBizSatUK

Full details and to book a ticket are here.

Hopefully see you in a few weeks.

domain names

Domain names and your brand

Do you own your domain name? If the answer is yes, think a bit harder. Do you own all of your domain names?

Most start-ups and small businesses have a website. But 9 times out of 10* they only own one domain name. And usually it’s the .com or the ending.

Part of owning your brand comes from protecting as much as possible. It saves you having to argue with someone else over who should rightfully own things. My advice would be to look at see how many domain names you could/should own that contain your brand name. They are relatively cheap to own, you can point them all to the same website, or leave them dormant, but owning them is the important bit.

This past year has seen a whole host of new domain name endings launched and some still to be launched. Lots of them are relevant to SMEs, many are industry-specific or location specific. For example:






the list goes on.

Why not spend a few minutes reviewing what domain name endings there are available and consider purchasing the ones that are relevant to you.

On top of that, make sure they are all registered in the correct name. Make sure that you/your business own them and that your contact details are correct and up to date. If your web designer registered the domain name for you as part of their service, make sure it’s not in their name. Also make sure you know the passwords for your hosting accounts. Essentially make sure that you have full control over your business assets.

If you’d like any help with your brand protection strategy, or a review of your brand protection, please get in touch.


*Not a real statistic

Picture from Pixabay, with thanks.

Why use a trade mark attorney to help with your trade mark?

Why use a trade mark attorney? There’s lots of information online… It’s a question I get asked a lot.

It’s true, you absolutely do not need to use a professional to help with your trade mark protection. In the same way that you don’t have to use an accountant to file your tax return, or the Check&Send service for your passport application.

My answer is simple, a trade mark attorney will add value and can save you money. Here’s how:

  • I’ll help you choose what application to file. It might be better for you to file a trade mark application for your logo minus a few bits. Or maybe in black and white. Perhaps the word on its own would be better. A trade mark attorney will discuss your business plans, will look at the registrability of your trade mark, and make suggestions based on those considerations. This reduces the risk of the trade mark being refused.
  • I’ll help get the admin right. I’m currently working with three separate clients who have had issues over ownership of their trade mark rights. A trade mark attorney can help spot those issues and help get it right in the first place. To record a transfer of ownership of a UK trade mark there’s a £50 official fee and you may also need an assignment document which will need to be prepared professionally.
  • I’ll help choose the classes and goods/services to cover with your application. With input from you, and decent questions from me, I will help work out which classes to cover with your application. For example, you might sell jewellery, but what about toy jewellery, or teething jewellery, they all fall into different classes. A trade mark attorney will work with you to make sure that you’re covering the right things and using the right language. This will save you money as it is not possible to add extra items once an application has been filed so you’d need to file a new application to cover the things you’ve missed. That’s a couple of hundred £s saved there.
  • I’ll find a cost-effective solution for protecting your trade mark. You might offer worldwide shipping, or export your goods, we’ll look at your countries of interest and put together a filing strategy to make sure you cover all of the countries relevant to you in the cheapest way possible. I’m well connected to trade mark attorneys in other countries and can usually get information and input to help you make decisions in those countries. I can also help you find an advisor if you have an issue overseas and don’t know where to start.
  • I’ll take away the hassle and the admin. You’re busy, we all are. Once we’ve got the information right for you and the application has been filed, there’s nothing else for you to do. I’ll keep on top of the progress of it, I’ll spot when things have taken longer than they should and will follow up with the relevant trade mark office.
  • I’ll look after the trade mark for you. Trade mark attorneys have record systems, your trade mark details will be added to those records and you’ll be reminded when things need to be done. Usually if you have a trade mark attorney recorded as your representative any correspondence about that trade mark will come to us first – that means that you’ll get more than just a random letter, you’ll get some initial advice about what the letter means and what, if anything, you need to do about it. If you’ve changed address or contact details, you might have forgotten to update the trade mark register, but we won’t change address without updating it, it’s part of our role. So you’ll always know that someone is able to be contacted about your trade mark.
  • I’m here for the extra “can I just ask…?” questions. I won’t charge you for asking me anything I can answer about your trade mark, it’s all part of the service. You can ask as many questions as you like, and if you’re local I might even buy you a coffee while you ask!

So there you go, a couple (wow, seven!) of good reasons why a trade mark attorney is a useful person to have around.

Please feel free to get in touch if I can help you with your trade mark matters.


Business name

Choosing a new business name – some DIY tips

When choosing a new business name, many people spend hours brainstorming, select one, register the domain name and away they go. There are lots of reasons why that’s not the best approach. So here are some tips of things you can do yourself when you’re choosing a name:

Google search (or another search engine of your choice!)

  • Search for the new business name, see what comes up
  • Search for it without spaces between words
  • Search for it with spaces between the words
  • Search for it with obvious alternative spellings (swap C and K for example) and repeat the above steps with those alternative spellings
  • Search for the name PLUS the description of your business (e.g. “name” AND make up)
  • Search for the alternative spellings PLUS the description of your business

Social media

Search all of the platforms you can think of, even if you don’t intend to use them yourself.

  • Twitter
  • Facebook
  • Instagram
  • Pinterest
  • Google+
  • Snapchat
  • YouTube
  • Search for the obvious alternative spellings too. Across all of the social media platforms again.

Domain names

  • Use a domain name registrar’s free search function. Here’s the one I use most often
  • Search for the business name with every domain name extension that might be relevant (.com, .net,, .uk, .london, .gift, .eu)
  • Search again for all the alternative spellings.
  • Search again with hyphens between words
  • Search again with the description of your business at the end (e.g. MYNEWNAMEBUSINESSSERVICES)
  • Make a list of all the domain names that are already taken and look at each website – is it live, is it a competing business, is it a business that you wouldn’t want to accidentally be confused with.

Industry journals/registers

  • In your industry, are there registers of practitioners? If so, search them for your chosen business name.
  • Is there a “go to” journal or publication? – search on their website.

Trade mark searches

  • Use the UK IPO trade mark search database.
  • Search for your chosen business name
  • Search again for all alternative spellings
  • Search again removing any spaces between words

None of this is an exact science, and it will be labour-intensive. Especially if you have a short list of a few possible business names. But, it is worth doing. It will cost you money, time and education of your customers if you have to rebrand after launch.

Please get in touch if you would like some help with this.

@stanmoreip on Twitter, Facebook and Instagram

Image from Pixabay, with thanks.