|Trade mark||Pending |
(Or at least it should be!)
What is a trade mark?
A trade mark is a form of intellectual property right that helps to protect e.g. words, logos, patterns etc. (referred to as “marks”) when used in connection with goods or services. This might include, for example, your brand name or logo attached to anything from t-shirts, software, skin care products or the arrangement of corporate events.
Trade marks will only be registered if they meet certain legal criteria. For instance, the relevant mark needs to be distinctive and not simply descriptive of the product or service you are offering. For example, you would not be able to register the mark “BANANAS” in connection with a business selling the fruit, as it’s simply a description of the product. You might be able to register a logo including the word “BANANAS” in connection with a fashion business, provided that the logo is distinctive and nobody else in that industry has registered the word for the same or similar things.
Why are trade marks important?
A distinctive trade mark helps to distinguish one business from another and enables consumers to identify where specific goods or services come from. In other words, the trade mark acts as a “badge of origin”. The relevant word, logo or symbol can influence a customer’s purchasing decisions (including decisions to make repeat purchases and to choose your products and services over a competitor’s).
To put this into context, imagine your main competitor starts marketing their products using the same name, or a very similar logo, to yours. This would likely be infuriating from your point of view, given the time, money and creative effort you will have invested in developing your brand. It would also be very confusing for your consumers – they may buy products from your competitor by mistake, diverting sales from you. So how can these types of scenarios be avoided? Getting a registered trade mark can help as you can use it to challenge those who start using confusingly similar marks for competing products.
It is also worth noting that trade marks are a type of property right and can be co-owned, assigned, licenced and franchised. For example, you may want to let others sell your products under licence for a fee, whilst still maintaining control over the quality of the products they sell bearing your logo. You may want to sell your business in future, and owning a registered trade mark can affect the value of your business.
When should you consider trade marks?
In short: at the very start of your business journey, and certainly before you start selling your goods or services and investing significant sums in marketing and promotion.
It is vital to check that there aren’t any companies or individuals already using identical or similar names, logos etc. If there are, then you will likely need to go back to the drawing board. And if you’ve already launched, you may risk facing a costly trade mark infringement dispute, which could require you to re-brand, pay damages and legal fees, and even destroy stock. Far from ideal.
How can I avoid potential disputes from the outset?
Numerous trade mark disputes have been reported in the media over the years, covering everything from band names, drinks products, clothing shops and pub names. Many trade mark disputes could probably have been avoided had the alleged infringer carried out some initial trade mark clearance searching at the outset.
Internet searches can give a valuable picture of what has already been protected (and therefore, what may need to be avoided) in the jurisdictions most relevant to your business. However, internet searches do not provide the complete picture. This is where we come in.
We can analyse whether third parties have competing trade marks – both granted and pending – that could prevent you from using your mark. Although these trade marks might not be identical to those you intend to use, the degree of similarity can be key. These types of searches are usually conducted by qualified trade mark attorneys, using their specialist knowledge and experience.
How do I protect my marks?
Assuming you run clearance searches and no major issues are identified, you can then file a trade mark application. This involves uploading any words, logos or graphics that you wish to protect, as well as specifying the categories of goods and services you want to cover. If your trade mark is registered, it can be used to prevent third parties from using a similar name, logo or brand for similar goods or services.
You should also consider whether you need to file applications in other countries, as registering in the UK does not afford you protection across the world. We can coordinate searching and filing in other countries for you, by working closely with local attorneys.
If you hired somebody to design your logo or some other component of your brand on a freelance basis, the default position in law is that they own the intellectual property in that logo (in this case, the copyright that automatically arises in respect of their creation). You, therefore, need to check whether the terms agreed with a designer actually transferred ownership of the relevant intellectual property rights to you. If not, you should arrange for the ownership of the design to be assigned to you before commencing a trade mark application.
Trade marks are valuable business assets that communicates directly with your consumers. When choosing a name for your product, it is important to make sure that your new brand does not infringe on another party’s trade mark rights, but also that the mark is sufficiently distinctive to act as a “badge of origin”.
Written by Flora Cook – Director of Trade marks – Founders Law