Your brand is an asset

For many companies, a trade mark is its most valuable asset. It is how customers recognise, remember and choose the products or services of one company over another in crowded markets.

Yet many growing businesses still sometimes treat trade marks as an afterthought, rather than what they really are: strategic commercial assets that underpin brand valuation and long‑term growth.

In this article, we set out a checklist of the most important elements to get right when you are building your brand.

Ownership

Consider who the owner of your trade marks is. Generally, this is a company (as opposed to an individual) but much will depend on your business structure. As intangible property, trade marks can be assigned either during the application process or once registered but this incurs costs, so ideally, trade mark applications should be filed in the name of the entity that is to ultimately own the rights.

Note that if a third party such as a branding agency or graphic designer has been contracted to create a new logo or website content, they will own the related intellectual property rights unless there is a document transferring the ownership of those rights.

Clearance

Are you free to use and register your trade mark in the countries that are of interest to you? Clearance searches are thorough checks to see what other marks are already protected in a particular country. In a worst-case scenario, you have invested time and money into launching in a new country, only to receive a letter from a third party saying that you are infringing its trade mark. Rebranding or split branding (trading under different trade marks in different countries) can be costly, both financially and reputationally. Conducting clearance searches early on allows you to make informed decisions based on your attitude to risk. 

Filing and registration

Assuming the clearance searches come back clear, or you decide you are comfortable with the risks raised, applications can be filed. There are various strategic decisions that can be made in terms of spreading the cost and when/where to file.

Best practice is to file applications early and ensure that the geographical scope of your protection mirrors your business plans. Ideally the trade mark will be registered in all countries where you are manufacturing or selling. Trade mark rights are territorial in nature and need to be obtained on a country-by-country basis. You therefore need to think strategically about when and where to file applications to obtain the breadth of protection you need, balanced against your budget. There are many reasons to register your trade marks, including:

• A trade mark registration certificate gives a strong basis for enforcement of your trade mark against third parties.
• It is fairly inexpensive to obtain a trade mark registration – depending on the country, it can cost as little as a few hundred pounds. This needs to be compared with the high cost of trying to regain a trade mark from a third party, defending litigation or an enforced rebrand.
• Unlike other IP rights that are only valid for a fixed time limit, trade marks can be renewed and enforced indefinitely, provided they are in use.
• A trade mark is a business asset that can be monetised e.g. via licence agreements or assignment/sale. You can dictate when, where and how a trade mark is used in each country.

As brands grow, your trade mark strategy needs to adapt. This does not mean registering everything: it means identifying what truly drives value in the business and ensuring that protection is aligned with that.

Enforcement

Once you have registered your trade marks it is important to stay vigilant and enforce your rights as necessary. Here are a few examples of proactive steps you can take:

• Customs – having a registered trade mark allows you to set up a customs watch to have counterfeit goods seized.  
• Trade mark watches – proactive enforcement via surveillance. By setting up regional or worldwide trade mark watches, you are alerted to trade mark applications in other countries that may be in conflict with your own. This gives you an early warning in case you want to take action, especially since trade mark applications being filed can be a precursor to conflicting products actually going on sale. 
• Online monitoring – get your local partners and distributors to keep an eye out for any counterfeit or copycat products and ask them to let you know as soon as they see a problem. They should be particularly vigilant online, monitoring third parties and proactively taking action against counterfeit sellers.  Online marketplaces all have takedown options on their websites to complain about trade mark infringement and you can request that infringing products be removed.
• Using ™ or ® – ™ can be used in relation to anything that you consider you are using as a trade mark (it doesn’t have to be registered), whilst ® is to signify that you own a registered trade mark. Neither are compulsory and some companies choose not to use them for aesthetic reasons. They can be a deterrent to third parties if they see these used, showing you are IP savvy. Beware that using ® when you do not have a registration can be a criminal offence in the UK.

Investment and exit

Clearing and registering trade marks can feel like something that can wait until a business is more established, but investing in IP at the outset reduces the risk of costly legal proceedings or enforced rebranding exercises down the line, once you have spent time and money building the company. 

Investors and potential acquirers will want to see that you have taken the necessary steps to protect the business and reduce the risk of future issues. It might be that you have decided not to do something, but you at least need to have asked the right questions and documented your reasoning. Being proactive gives investors and acquirers confidence that their investment is secure. It means you can demonstrate that you know what you are talking about and have taken steps to protect your IP, for example when due diligence is conducted prior to investment or exit.

A coherent brand clearance and registration strategy allows a business to grow with confidence. It supports entry into new markets, enables the safe launch of new products or services, and provides the legal certainty required to license or collaborate. Crucially, as a business matures, trade marks start to play a more visible role in how it is valued. Whether the goal is external investment, a joint venture, or a future exit, a coherent and well‑maintained trade mark portfolio sends a strong signal.  

We regularly conduct portfolio reviews for established companies and advise start-ups in relation to devising their IP strategy. If you would like to review your current portfolio or are looking to set up your IP strategy, get in touch with the trade mark team at GJE: gje@gje.com.