3 Further Key Considerations for Start-Ups Who Want to Protect Their Brand

Following our earlier newsletter discussing the key considerations when looking to protect your brand, below are three things to bear in mind once your brand is registered to ensure it remains protected

‘Use it or lose it’

Once you have secured your trade mark registration, make sure that you use your trade mark, in the same format that it is registered (although minor variations are ok), in relation to the goods and services covered by the registration.

If a trade mark is not used, as registered, for a consecutive period of five years in the relevant country/territory (three years in some countries), a third party could apply to have the registration cancelled. If you want to be able to rely on your registered rights to prevent others from using or registering the same or a similar mark, it is therefore vital that your own mark is put to use, if it has been registered for more than five years.

What use counts? Broadly speaking, use of a trade mark means active, commercial use, in relation to the goods or services covered by the Registration (i.e. the sale of goods or provision of services to third parties).

Over time, trade marks, in particular logos, may change - it is worth considering from time to time whether new trade mark applications are required to protect the new version of the mark.

Recent cases (e.g. the Hasbro Monopoly decision) highlight the potential consequences of attempting to ‘evergreen’ trade mark protection by making repeat applications for the same mark. Such practice, whilst incredibly common, is viewed by the Courts as an abuse of the trade mark system and consequently later trade mark applications may be considered to have been made in bad faith and be cancelled on that basis, even if they are not vulnerable to cancellation on the grounds of non-use.

Online brand protection - what can you do beyond registering your trade mark

• Domain names - make sure you secure domain names for your chosen brand, so no one else can register them. If you find a third party has registered a domain name corresponding to your registered trade mark you might be able to recover the domain name through the Uniform Dispute Resolution Procedure (UDRP). Consider whether your budget allows for defensive domain name registrations to prevent cyber squatters and typo squatters (misspellings of trade marks);
• Enrol in Amazon’s Brand Registry so only authorised sellers can use your brand;
• Google AdWords- purchase all relevant keywords for advertising and monitor third party ads to ensure your brand is not used in a competitor's advert;
• Social Media - set up your own accounts for your brand and use Facebook, Twitter and Instagram reporting tools to report any copycat accounts or trade mark infringement.

The other 'B' word - Brexit

Two things to remember following Brexit, if you have an EU Trade Mark:

1. Your registered EU Trade Mark will now be protected in the UK by virtue of a newly created, cloned UK Trade Mark Registration (provided it was registered at the EUIPO by 31 December 2020). The UK Registration will need to be renewed separately from the EU Trade Mark Registration if you wish to maintain protection in the UK.

2. If you had a pending EU Trade Mark Application on 1 January 2021, or you have filed a new EU Application since 1 January 2021, and would like protection in the UK, you will need to file a new UK Application. It is no longer possible to claim the earlier EU filing date when filing the corresponding UK Application as the priority deadline was 30 September 2021.

This is a lot of information to take in, and there are a number of things to think about; that is what we are here for.

As a European IP firm we would be happy to assist with every aspect of protecting your brand, including maintaining protection after registration. Please get in touch so we can learn more about you and your aims during a complimentary introduction meeting or call.