A large percentage of the value of any company can be tied up in its brand. As former Chairman of Quaker Oats Ltd. famously said, “If this business were to split up, I would be glad to take the brands, trade marks and goodwill and you could have all the bricks and mortar – and I would fare better than you.”

However, no matter how much they’ve spent on creating and marketing it, too many companies treat their brand as a poor relation to their inventions when it comes to securing protection. And plenty go to market without giving proper consideration to whether they are even entitled to use their chosen brand at all.

Below, we explore how to protect your brand and ensure that you have a legal green light to use it in the first place. We start with the basics, before considering the fundamentals of brand protection strategy, enforcement issues, and how to avoid infringement.

You may also wish to learn about protecting your technological innovations through patents and designs; if so, visit our Patent FAQ and Designs FAQ pages respectively for more information.

Trade Mark Basics

While a patent protects technology, a trade mark protects identity, as a distinctive guarantor of trade origin. In other words, a trade mark is a recognisable name, design, or expression that identifies a product or service marketed by a company and distinguishes it from products or services marketing by other companies. It could consist of, for example, a word, personal name, slogan, logo, animation, colour, or the shape of the goods or their packaging. As much as it’s crucial to develop a recognisable identity, it’s just as important to protect that identity appropriately in order to continue benefiting from it.

 

It’s important to note that simply buying a domain or registering a company name with Companies House doesn’t give rise to enforceable rights. A Companies House registration merely identifies a legal entity; rights arise only through use of that name.

 

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From starting an application to having a trade mark granted, the registration process can take four to six months in the UK. Anyone can search existing trade marks and file their own. But that initial search involves complex analysis to weigh up risks of potential conflicts, and the superficial simplicity of the trade mark filing process makes it easy to make mistakes that could leave the mark vulnerable to invalidation, or at least restrict its scope of protection. So while you don’t need to hire a trade mark attorney, they will come into their own – and quite possibly save you a lot of money in the long run – by helping you identify and avoid potential conflicts and ensuring that your trade mark protection is properly aligned to your long-term business strategy, accounting for expansion into new geographic markets or product categories.

 

Find out how we can help you protect your brand here.

There are three primary reasons to register a trade mark:

First, registered trade marks have value in and of themselves, and can be attractive to investors – an asset against which funds can be secured. In some cases, when a brand-led business is sold without any tangible assets such as property or inventory, trade marks may be the only store of value.

 

Second, in those countries where unregistered rights are not recognised, it can be very difficult – or even impossible – to take action against a third party using, or trying to register, a mark that conflicts with you own.

 

Finally, trade marks can help protect your brand – and your bottom line – from counterfeiting and black market trade. Registered trade marks can be recorded with customs authorities to enable suspect goods to be seized at the border.

 

Find out how we can help you protect your brand here.

This is the million-dollar question – possibly literally, depending on the value of your brand.

 

There are 45 ‘classes’ relating to different goods and services. You register a trade mark within the classes relevant to your business. If another company has a trade mark identical or similar to yours for identical or similar goods or services, it will pose an infringement risk to your use and would be grounds to oppose any application that you file.

 

Trade marks are not universal. Ownership of a mark in the UK, for instance, doesn’t entitle you to use or register it in other countries. If international expansion is part of your business strategy, you need to consider that when developing your brand – are the relevant marks available in the relevant classes in the markets you will be targeting? It might take longer to settle on a brand, but the extra effort will be worth it if you avoid having to change your brand wholesale, or develop new brands for new markets that take time and money to build up recognition and trust.

 

Finally, it’s not just registered marks you have to look out for. The UK and many other countries recognise unregistered rights in a mark arising through use. Such unregistered rights can form the basis of a challenge to your use or application for registration.

 

Find out how we can help you avoid infringement here.

Getting caught out can be costly. It’s not just the legal costs you’ll incur fighting an action against your use, or the penalties if you are found liable for infringing someone’s earlier rights, including an injunction against your use and damages (or even if you settle). There’s the wasted expense of creating your brand, the cost of creating a new one, the potential loss of revenue if you are unable to operate in a specific market, negative publicity and the loss of customer recognition as a result of having to change your brand.

 

Find out how we can help you avoid infringement here.

Trade Mark Strategy

In short: absolutely! A sound trade mark strategy – knowing what you are going to need to protect, when and where you will be applying for that protection, and how having that protection will support your growth – is like a solid set of foundations for a house. It’s all about giving your company security and ensuring you can make smooth progress through the vital early stages of your growth, avoiding any pitfalls such as costly rebrands or legal challenges at a point where they could sink you completely. And ultimately, getting brand protection right will safeguard your valuation when it comes to securing investment or seeking an exit.

 

Research has repeatedly shown that as much as 70 per cent of the value of a company is attached to its brand rather than its tangible assets. When Nestle acquired the Rowntree business in 1988, for example, net assets accounted for just £300 million of the total £2.55 billion price tag – much of the rest being made up of the earning potential of Rowntree’s popular brands, such as Kit Kat, Polo, and After Eight. Your brand is valuable because it’s the public face of your company. It creates associations and loyalty for consumers, who will pay a premium for a product from a company they know and trust.

 

Find out how we can help you develop a robust brand strategy – or audit an existing one – here.

You should file your trade mark application as soon as you have decided on a brand that you are confident is not going to conflict with other companies’ existing trade marks in the relevant class(es) in the markets in which you intend to operate.

 

Find out how we can help you develop a robust brand strategy – or audit an existing one – here.

You should file trade mark applications in all the markets and / or jurisdictions in which you intend to use that mark. Even if you won’t be actively marketing and selling the relevant product in every market straight away, it’s better to secure the protection in each of them from the outset – if you don’t you might find yourself facing considerable inconvenience and cost when you discover someone else has registered your mark in the relevant class in another market before you, and have to go through an expensive rebrand.

 

Of course budget is not endless and so you can take advantage of the priority period. As long as subsequent applications are filed within 6 months of the first, your rights will effectively be back dated to the first filing. If you miss the priority date you can still file but the new applications will have a later filing date.

 

Find out how we can help you develop a robust brand strategy – or audit an existing one – here.

The time it takes from application to approval of a registered trade mark varies depending on where you are filing. A successful UK trade mark application is typically granted within four months. An EU trade mark application, which covers all the EU member states, generally takes around five to six months. Applications made under the Madrid Protocol, a system that allows trade marks to be obtained in multiple jurisdictions through a single application, take longer – typically between 12 and 18 months.

 

Find out how we can help you develop a robust brand strategy – or audit an existing one – here.

Registered trade marks are valid for 10 years. However, in most countries they become susceptible to challenge on grounds of non-use after three or five years, to prevent speculative applications and trade mark “squatting”. A third party wanting to use a registered trade mark that you haven’t used for a particular category of product or service in that time can apply for the registration to be cancelled so they can file for their own.

 

Additionally, you must be using a trade mark “as registered” in order to defend against claims of non-use. That means the same wording, format, presentation, colour, etc., which obviously can change quite considerably over time to fit your company’s evolving identity. It’s important to ensure that the use of your trade marks in marketing materials, on social media, etc., is consistent with your registered mark, to keep records of every way in which you have used the mark, and to file fresh applications if anything does change.

 

Find out how we can help you develop a robust brand strategy – or audit an existing one – here.

Trade marks should always be used as adjectives, not as nouns or verbs – to cite a classic example, “a Hoover vacuum cleaner” rather than “a Hoover” or “Hoovering”. Using a trade mark as a noun or verb  can – as in the case of Hoover – lead over time to it becoming a generic term, rather than being a label of origin. If a trade mark becomes generic in this way, it becomes increasingly difficult to enforce registered rights against third parties and the mark may eventually be removed from the register following a challenge from a third party.

 

Find our more about how to use – and not use – your trade mark here.

 

Trade Mark Enforcement

The key to effective trade mark enforcement is simple (on the surface, at least): monitoring, monitoring, monitoring. Keep an eye on companies active in your business area, and closely related ones, to make sure none are using trade marks that you own. You can set up a watch service to be alerted to possibly conflicting trade mark applications that are filed. This can be an early warning of a conflicting product that may enter the market.

 

Trade mark disputes are  fairly common, and there are several options available to you if you suspect another company of using a trade mark identical or confusingly similar to your own. As tempting as it may be to wade in all guns blazing, a full legal battle will not always be the most cost-effective or desirable way to resolve things. An IP attorney will be able to weigh up all the relevant factors – such as the commercial background, what the business wants to achieve, the financial strength of each party, the likely cost of legal action, possible compensation or financial liabilities, and the wider reputational impact – and advise on the best course of action.

 

There are various rights that can form the basis of an action, including trade marks, unregistered passing off rights, registered and unregistered designs, patents and copyright. An IP attorney is well-placed to advise you about the best option for your case.

 

Find out more about how we can help you enforce your trade mark protection here.

It can be difficult to know where to begin when it comes to addressing the issue of counterfeit products, with so many fakes seemingly so readily available. Monitoring sales and distribution channels, and making judicious use of the takedown functions provided by online marketplace sites, is vital. It can also be helpful to record your various intellectual property rights with trading standards and customs authorities around the world to ensure that suspicious items are seized with notification being sent to you. Make sure you work with an IP attorney that has the right connections and can make sure that counterfeit goods are taken out of circulation promptly.

 

Find out more about how we can help you enforce your trade mark protection here.