Guest Article: The Value of Trade Mark Protection

As highlighted in the recent website spoofing article, registering your company and product names as trade marks are essential for combating unlawful acts such as spoof websites and copycat social media pages, cybersquatting and counterfeiting.

You might want to start thinking about filing a trade mark if you have a business, sell a particular product or if your personal name is well-known and could be used to sell merchandise or services.

Your name, product or business is your brand which communicates to the world, the quality of what you sell or what services you offer, and your image or your company’s image. Your brand also allows you to distinguish your products or services from those of others in the market, so consumers know that they originate from you. Therefore, it is an important and valuable business asset.

Why register a trade mark?

Registered trade marks are territorial rights which give the owner the exclusive right to use the brand, and the trade mark registration is evidence that the registered proprietor is the owner of the brand. Once registered trade marks last for an initial period of 10 years (for the UK at least) but can potentially be renewed indefinitely.

Protecting your brand identity

It is possible to register names, logos and slogans as trade marks as well as non-conventional things like colours, sounds and even smells. However non-conventional trade marks can often be a challenge to protect so it is important to obtain expert trade mark advice from the outset so that the process can be navigated safely.

The more distinctive the trade mark the more likely it is to be registrable, and also the stronger the trade mark protection you will have once it is registered. Descriptive terms like soap for a bar of soap would not be acceptable because they should be available for all to use, so you should avoid choosing a brand name that describes your product or services. The strongest trade marks are made-up words like Pepsi, Kodak or Oreo but arbitrary words when compared to the goods or services work equally well like Apple for computers or Amazon for retail services.

Before deciding on a brand name, it is worth checking if someone (e.g. following a quick Google Search) else may already be using the same or similar trade mark in the relevant jurisdiction. We would also recommend conducting more detailed availability searches by a trade mark expert as this will identify whether there are prior rights which may form an obstacle to the use and registration of your mark. Conducting clearance searches will help reduce the risk of a possible claim for trade mark infringement.

Picking your goods and services of interest

Trade marks are registered in respect of goods and services and are divided into 45 groups called “classes”. There are 34 classes of goods which cover everything from industrial chemicals and tech gadgets to clothing and food and drink items. Classes 35-45 are the services classes and cover companies offering everything from advertising and holidays to IT support and healthcare. A carefully and strategically drafted trade mark application will be important for both brand protection and brand exploitation.

Most companies will only ever want a few classes that are specific to their business, so it is fairly rare to file a trade mark covering all 45 classes of goods and services unless that entity is a globally-known brand. Each class of goods and services carries an additional fee, so typically we might only file in 3 classes which is normally enough to cover all business activities.

It is worth noting that in the UK it is necessary to declare that the trade mark will be used in relation to the goods and services sought, so it is important not to seek protection for items or services you do not have any intention of commercialising. That said it can be sensible to future-proof your business within reason, so if you were a fashion business and currently offering clothing but you were intending to create a line of sunglasses in the near future, then it would be sensible to include the sunglasses class on filing the trade mark.

Further, trade marks can become vulnerable to cancellation for non-use at 5 years post registration in the UK and anything not in use at that time could potentially be challenged by a third party and deleted from your trade mark, so it is recommended that the trade mark is used for all areas covered by this period.

Select your key territories

Trade marks are territorial in nature, therefore, you should apply to register your trade mark in your key territories of interest. This may be where you are currently operating or where you have an interest in expanding in the future. Think about the territories where you manufacture and the territories where you offer your goods and services.

Many people ask if they can acquire a “global trade mark”, but unfortunately there is no such thing and to file a trade mark in every country in the world would likely cost hundreds of thousands of pounds, so for most individuals or companies it is simply not viable. While there are different routes to consider that have a range of pros and cons, you will still need to file the trade mark by territory. Therefore, if you have a number of territories of interest, like the UK, EU or US, then we can advise on a trade mark filing strategy that will meet your brand protection needs whilst being sensitive to your budget. 

Make your brand work for you

Once your trade mark portfolio is in place you can use these assets to work for you. You can license your trade marks, or enter into franchise deals with third parties in return for a royalty/receive share.

You should note that in some territories, trade mark registrations are required before you can license, commercially exploit or import goods into that market.

Trade mark as an asset

As well as licensing, trade marks can be bought and sold. A registered trade mark is an identifiable asset which attracts value, so make sure your trade mark and its value are maintained. 

Potential investors always look to ensure that the appropriate IP protection like trade marks have been registered and are valid, so if a business is looking to attract investment then it is highly recommended that all the trade marks are in place before hand.

Recognising trade marks as value for money

A UK trade mark covering 3 classes of goods or services is not a significant financial outlay and whilst the application costs are upfront, given that the trade mark protection covers 10 years, spread out over the 10 year period they represent good value for money. Also, a trade mark is renewable indefinitely providing the renewal fees are paid.

Preserving the value of your brand

Once registered it is important to monitor any third-party use of an identical or similar brand. Any unauthorised use may infringe your trade mark rights, which in turn affects the value of your company name and the business which the brand attracts. Therefore, you should identify a strategy which deals with infringers in terms of their risk to your brand. Having a registered trade mark also acts as a deterrent to infringers because it is easier for them to be aware that a registered right exists.

Trade marks provide a valuable remedy

While an individual or business does acquire unregistered rights through commercialisation of a brand name, the process of enforcing your rights in the case of infringement or if someone else tries to register your name can be expensive and laborious. Once you have a registered trade mark, you will be able to rely on that right to challenge a third party seeking to register a similar or identical trade mark for similar or identical areas to you.

On registering your trade mark, you will receive a formal certificate of registration which is an important document for taking action against website spoofing, domain name squatting, counterfeit goods or infringing websites or social media pages.

In order to initiate any kind of complaint of this nature through ecommerce platforms, domain registrars and social media providers, the best kind of proof of your entitlement to the trade mark in question is by providing the trade mark registration certificate.

Important notice

Registering your company name with Companies House provides you some (albeit weak) protection to protect your brand. However, this does not give your business the same protection or benefits as a registered trade mark.

Other strategies

Also consider protecting your brand through other means. This includes copyright, registered designs and also registering domain names for your brand.

For more information, please contact Dan Head at dan.head@sheridans.co.uk

Many thanks to Dan Head

Very many thanks to Dan for his wonderful contribution to our newsletter.

Dan Head is a Trade Mark Attorney. Dan manages trade mark portfolios for leading multinational corporations in the UK and EU. He conducts opposition, revocation and invalidity actions throughout the UK, EU and worldwide to protect and enforce trade mark portfolios.

Dan also advises clients on enforcing rights in trade marks, copyright and designs against infringements in the UK and internationally and is a member of CITMA. You can contact Dan by clicking here.