IP on a budget - Part 2: Trade marks

Now that you’ve protected your brilliant invention, let’s talk about trade marks.

If you are looking to protect your brand on a budget, these are the best things to keep in mind.

What?

The first thing to decide is what needs to be protected. A word mark in block capitals will usually give you the broadest protection for the name of your company or product. However, if that name is a word which might be descriptive of the products or services you offer, then you may have better luck protecting a distinctive logo version of that name. Until recently, logos in Black and White offered protection for all colour combinations. It is now advisable that if you only ever plan to use the logo in one colour scheme, you protect it in those colours.

A trade mark application must include a specification of goods and services, and that should cover everything you currently provide under the mark, as well as everything you plan on providing or producing in the near future. Care should be taken when drafting this list – you need to make sure you cover all items of interest, but if you go too broad, you risk encountering objections from parties over goods/services which are not really all that important to you.

Where?

As a first step, the most important places to protect your trade mark are

1) where you are based (assuming you are trading there) and

2) where your goods are being produced.

This may be the same territory, but it is also common for companies based in the UK to have their goods produced elsewhere.

Once you have protection in the above territories, you will want to look at where you are doing the bulk of your trading. Those countries should be next on your list.

If you have plans to expand, you can then get ahead of the curve by moving to protect your brand in particular territories in line with, or just prior to rolling out your brand or product abroad.

When you approach your protection as outlined above, you not only spread the cost over a number of months or years, you also give yourself a way to save money if you end up deciding to rebrand.

When?

Unlike patents, there is no prescribed timeline for when to register a trade mark, and because of this, many companies wait. Trade mark applications can be seen as an insurance policy, so in the long run, delaying filing may cost you more money.

If you have the funds, it is always prudent to do an availability search for all names you are thinking of adopting, before you commit. This may feel like a big outgoing, especially if you are a small business just trying to stay afloat, but it is the safest option. A trade mark attorney can do a number of different types of searches, and advise you on the results. However, you may prefer to carry out a deep dive Google expedition of your own, or have a look at the UKIPO website and do a trade mark search for your name or logo. It is worth remembering that an identical trade mark check may not reveal relevant similar marks, which could still cause you problems if the marks are confusingly similar. In addition, company name or domain name registrations do not give you enforceable trade mark rights.

Where searching is not an option, either due to time or financial constraints, it is worth starting by filing a home trade mark application in your country of residence. In some territories (such as the UK), this will come with a basic search and the examiner will flag any extra potential issues. This should also alert any third parties who may pose an issue to you and your potential brand, who have themselves set up watching services to monitor new trade mark applications. Although you will have paid for the application to be filed, if it becomes clear that there is already someone in your corner of the market with deep pockets and prior rights, it could still be cost effective to abandon it at this point. You can file a trade mark application yourself, or you can use a trade mark attorney. We would always recommend using an attorney.

Trade Marks are territorial, which means they only offer protection in the territories in which they are registered. Searches are generally also done by territory.

The first filing of a trade mark application establishes a “priority date”, and starts the clock rolling on the “priority” period. This means that any subsequent trade mark applications you file in the next six months for the same mark and the same goods/services can claim the priority date, which essentially back-dates your rights, so that they are deemed to begin on the date the first application was filed. The priority period is useful for spreading the cost of obtaining initial trade mark protection. However, it also means that there will always be a level of risk when filing a new application, even if you have conducted extensive searching, as it is impossible to know with absolute certainty whether any applications claiming priority may suddenly appear in any given territory.

The majority of our clients come to us at one of three stages:

1) The start – The Client has a brilliant idea for a brand/product/service and wants to name it before they have spent £££ on physical branding, domain names, registering at Companies House… etc.

2) Slightly after the start – The Client has filed their own trade mark application, and has now hit a roadblock

a) they have made a mistake on the application and need help to correct it, or

b) they have received an official objection from the examiner at the relevant trade mark office and need advice as to how to overcome it, or

c) they have received a third party objection and need help negotiating a settlement

3) An Inconvenient later date – The Client has been trading for years, they have protected nothing, they have realised that someone else has now registered their trade mark.

a) they may have realised this because they have encountered confusion in the market, or

b) their goods have been detained at customs, or

c) their Amazon page has been shut down

The list goes on…

Who?

It is always important to know who owns a trade mark, as the trade mark itself can develop substantial value as the brand becomes more recognisable and synonymous with the goods or services being provided. A trade mark can be filed in the name of any legal person, so it can be owned by an individual, a company, or a partnership.

Why?

If there is any part of your brand, the name, the logo, the tagline, the colour, the shape, the sound, or the smell, that you would be upset if someone were to copy, you should consider protecting it. Not everything can be protected, but a Registered trade mark, will give you protection for a specific set of goods or services. This means that if someone starts using your brand in a way you don’t like, you have a much better chance of being able to stop them.

It is generally safest and cheapest to protect your brand/logo as early as possible.

Do Not

It is an offence to use the sign ® on anything that is not a registered trade mark.

Do

If you want to signal to the general public that you consider something to be your trade mark (even if it is not registered), feel free to use ™ instead of ®.

We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys. We enjoy looking after your ideas so you are free to do what matters most to you.

Get in touch if you would like to discuss your innovations and brand protection further.