When working with start-ups, I regularly get asked the questions ‘why should we protect our brand?’ and ‘how do we do this?’. Put simply, it is to ensure you are protecting your business. It prevents others from using your brand, but it is also vital to check that the path is clear to use your brand, ensuring you aren’t infringing on someone else’s. Both of which could be very costly to resolve further down the line.
I’ve drawn up 5 key considerations to follow to ensure that your brand is protected from the start, making you more attractive to investors with a positive impact on your business value.
1. Choosing a good trade mark
When choosing a brand name there are a number of marketing considerations: is it attractive, does it have an interesting meaning, what does it tell customers about your products or services, are there any negative connotations? From a trade mark perspective, there are also points to bear in mind: most importantly, a trade mark should be distinctive and stand out in a crowd. It is best to avoid words that are descriptive of the products or services you are offering under the mark. Not only will this ensure that your trade mark is accepted for registration, but it will also afford you the strongest protection - the more unusual your brand, the more easily customers will associate it with your products/services alone, and it will distinguish you from other traders. Some of the best trade marks are invented words or arbitrary marks that have no connection with the product or service, e.g. CIF, KODAK and APPLE.
It is also important to ensure that the mark you choose is available and is not likely to be confused with someone else’s brand. If it is already in use by a third party or it is registered as a trade mark you might be infringing.
Before applying for your trademark, commencing use of a new mark, or expanding into a new field, we would generally recommend that you conduct searches.
This is to make sure that names, phrases or symbols that you want to protect, or use, are not already taken.
These can be carried out through the online databases of the UK Intellectual Property Office, or the EU Intellectual Property Office, or we can assist and instruct a specialist searching company if necessary to conduct a comprehensive search.
It is worth remembering that SIMILAR marks (not just identical ones) can sometimes be an obstacle to your use of your brand, so you need to think carefully about your search parameters. Searches also have their limitations and whilst they give a good indication of the risks of adopting a particular mark, they cannot entirely rule out the possibility of a conflict.
3. Why should you register your trade mark?
Most importantly, a trade mark registration gives you the right to prevent others from using the same or a confusingly similar mark. For the first five years you can rely on your registration alone and do not need to prove you are using the mark (see ‘Use it or lose it’ below). Whilst you can acquire rights (‘common law’ rights) through the use of a trade mark, such rights typically arise only as a result of extensive use over a long period of time. Enforcing such rights, by relying on the law of passing off in the UK, requires substantial evidence of reputation, meaning more money, time and effort, and the outcome will often be less certain. A trade mark registration is an investment: like all IP, trade marks are one of a business's most valuable assets and will help to protect your business and reputation from potential confusion in the marketplace. Trade marks can also earn you money, by being sold or licensed, for example as part of a franchise agreement.
4. How do I register my trade mark?
Each country or territory has its own separate trade mark system, and where you file an application will depend on how widely you wish to protect your trade mark. A UK Trade Mark is registered by filing an application at the UKIPO (UK Intellectual Property Office). The UKIPO application process takes around 4 months, as the application is examined to ensure it meets all of the requirements for registration, and then published for opposition by third parties, for a period of two months.
There is an EU Trade Mark system, under which it is possible to obtain EU wide protection, and an International (‘Madrid’) Trade Mark system which allows you to cover a number of different countries (such as the US, Canada, China, Australia and New Zealand) under one application. The costs of the International Application will depend on which countries you wish to include, as the official fees vary markedly by country.
There are official fees payable in all jurisdictions, and these vary by country and according to the number of Classes covered by the Application, so it is best to budget accordingly.
5. What are ‘goods and services’ and ‘classes’?
Trade marks are registered in relation to particular products and services. These are divided into 45 Classes under the international NICE classification system (Classes 1-34 covering goods, Classes 35-45 covering services). Goods and services are generally categorised according to their purpose/use or their material but there are some anomalies! When deciding what to protect your mark for, how far should you go? Choose products and services which you are intending to offer under the mark. You want your protection to be future-proofed to some extent as it is not possible to add further goods and services at a later date, but if you go too broad you could jeopardise the registration (for example, if it is not used for those goods and services – see below). There are also additional fees per Class so budget will be a consideration.
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. We would happy to assist with every aspect of searching and protecting your brand.