Strategy for protecting your brand name
In today's global and increasingly competitive marketplace, it is more important than ever to stand out from the crowd and capture the attention of consumers. Trade marks are essentially 'signs' which help consumers to identify and differentiate your products or services from those of competitors and other traders.
They are also key advertising and marketing tools and communicate various messages to consumers in relation to origin, quality, trust, reliability and the benefits of your goods or services.
Importantly, trade marks can help your business to grow, opening the door to potential commercial opportunities and revenue streams, for example, through trade mark licensing and franchising agreements.
Strategy for protection
Having the right trade mark strategy in place, will help you establish a solid foundation for your brand name, and ultimately best position you and your business for maximising and protecting your trade mark rights.
The best way to protect your brand name is through trade mark registration, which will enable you to prevent the unauthorised use of your trade mark (i.e. preventing trade mark infringement) and can help act as a deterrent to competitors and other traders from using the same or a similar trade mark.
Once registered you can mark your products and service materials with the ® symbol, putting other businesses and traders on notice of your rights. Trade mark registration can also provide you with opportunities to maximise the commercial potential of your trade marks e.g. through licensing, franchising and sale agreements.
Note that having a UK Companies House registration for your business name (which may include your brand name) will only enable you to prevent others from later registering the same company name. A company registration will not give you exclusive rights to use of that name as a trade mark.
Brand protection strategy tips:
- Identifying branding elements for protection
Your strategy should firstly identify any branding elements that are suitable for protection, the most important being your main brand name. It is also possible to protect sub-brands, logos, imagery associated with your brand, label and overall get-up/packaging (if these are distinctive enough for enough for trade mark registration and comply with trade mark rules).
You should also identify the goods and/or services of interest to you and the markets that will be relevant, bearing in mind any possible expansion down the line.
- Early Trade Mark Clearance Searching
Trade mark clearance searches are important to determine that your chosen brand name is available to use and register and do not conflict with and infringe any existing rights owned by other businesses or individuals.
Searching at an early stage, ideally well before launch, will give you the confidence to proceed with filing trade mark applications and continue with your brand name plans, where no conflicting rights have been found. If searches reveal any potentially problematic existing rights on the relevant trade mark databases and/or existing conflicting marks already in use, then you will need to consider whether it is best to choose an alternative brand name (to save you time and money down the line from a potential re-brand), or whether any identified risks can be overcome or mitigated in some way. Avoiding any challenges and disputes before they have a chance to arise, is better in the long run, for brand reputation and also costs purposes.
- Trade Mark Registration
A trade mark is registered by filing a trade mark application with the relevant Intellectual Property Office in your country/territory of interest, where you will be using your trade mark.
To obtain a trade mark registration in the UK, an application can be filed with the UK Intellectual Property Office (“UKIPO”). Once an application is filed, it is examined to determine whether it meets trade mark law requirements. If there are no issues the application will be published in the UKIPO Trade Marks Journal. During the 2-month publication period (which can be extended to 3 months), third parties can file an opposition to the application. If no oppositions/objections are made, then the trade mark application will register usually in around 4 months and a certificate of registration will be issued. In order to maintain the registration, it will need to be renewed every 10 years.
Information required for filing includes the Applicant’s name and address, details of the trade mark to be filed, a list of the goods and/or services to be covered and details of any earlier trade mark rights (if claiming priority of the filing date of an earlier filing for the same mark).
If you are also interested in filing trade mark applications in other countries outside of the UK, then most Trade Mark Offices are nationally based, although there are systems for filing in a number of different countries e.g. EU and International systems. The best route for registration will depend on your countries, mark and goods/services of interest.
- Post-registration brand monitoring and policing
Once trade mark applications have been filed and registrations obtained, it is important to pro-actively police your trade marks, to prevent the dilution of your rights and to help strengthen and maintain your brand reputation and position in the marketplace.
Having the relevant watches and monitoring services in place, will enable you to take action against any unauthorised use of your trade mark and to prevent the registration of any identical or confusingly similar trade marks (e.g. by filing an opposition and/or objecting to use).
- A well thought through brand protection strategy will help you to optimise and maximise your trade mark rights.
- Clearance searching is an important process to enable you to determine whether your brand name is available for use and registration.
- Trade Mark Applications should be filed for your goods and services and in the markets, in which you plan to use your brand name. If there are plans for new product or service lines and/or expansion into new markets, then these factors should also be considered as part of your filing strategy.
- Policing your trade marks, through watching and monitoring services, will help you to maintain and strengthen your rights.
- A Chartered Trade Mark Attorney can advise you on developing an effective strategy, and can help with searching, filing applications, and the monitoring and policing your brand.