Sales & Marketing

Brand protection: Trade mark registration

8 min read

05 February 2014

If you don’t know your trade mark from your registration, then your most valuable company asset could be at risk. Louisa Dixon, solicitor at Taylor Vinters, provides some insight.

Business across the globe is built on brands – but what truly is a brand, and how do you protect it? The well-known author and marketer, Seth Godin, defines a brand as “a set of expectations, memories, stories and relationships that, taken together, account for a consumer’s decision to choose one product or service over another”.

Essentially, a strong brand influences purchasing decisions – but it does a whole lot more besides that. A brand gives a business its identity and ethos. It also, very cleverly, enables companies to charge a premium for their products or services. Just think about how many times you have chosen to pay extra for a branded product simply because you know and trust the name?

So, whether you sell consumer goods or specialist technology, supply professional services, or operate an online platform, a strong brand is extremely valuable, which is why protecting it is so very important.

As a business, you protect the reputation of your brand by providing a high-quality product or service and ensuring your actions reflect and uphold the values and ethos of your brand. However, if we think back to Seth Godin’s description, that a brand affects a consumer’s decision to choose one product or service over another, it becomes clear that perhaps the most important part of brand protection is ensuring consumers are able to identify your goods or services over others.

This is where trade marks come in. The terms ‘trade mark’ and ‘brand name’ are often used interchangeably as they mean essentially the same thing – the name or mark that allows consumers to identify your products or services as yours. A company’s most valuable trade mark will usually be its name and the names of its products and services. But trade marks also come in the form of logos, colours, shapes, sounds and even smells.

A key part of every company’s brand protection policy should therefore be identifying and registering its trade marks. Registration gives you the sole right to use your trade mark in relation to the goods or services it is registered for and, with effective enforcement, enables your trade mark to retain its critical function of identifying your products or services and differentiating them from others. Furthermore, failing to register means there is a much higher risk that you could be prevented from using your trade mark in the future by a third party. It is therefore an essential tool in effective brand protection and one that should not be overlooked.

Trade mark registration can be a relatively cheap and quick process, and can be achieved by four simple steps.

Continue for the four steps of trade mark registration…

1. Identify your trade marks

Firstly, identify which marks you want to use and register. As a minimum, you should be thinking about registering your house mark – usually your trading name. However, you might also want to consider registering the names of individual products or services, or perhaps also your logo or a particularly distinctive part of it. If you haven’t yet chosen your trading name then remember: the more distinctive the name, the easier it is to protect and enforce. And by ‘distinctive’ we mean made-up words, or words that bear no relation to the goods or services for which they are used.

2. Ascertain your key markets

Ideally you want to register your trade marks in each of the countries you trade in. Contrary to popular opinion, there are no ‘worldwide’ trade marks, so you do have to register in each country individually. However, it is possible to get an EU-wide trade mark that covers all 28 EU member states. Many businesses will therefore often start with registering in a few key markets – usually the EU and the US – and go on to register in other countries as their market expands.

3. Clear your marks for use

There is no point investing in a trade mark if you can’t use it because someone else already has rights in the name. For this reason, before you invest heavily in a new name, it is a good idea to have clearance searches carried out to ensure you are not going to end up on the wrong end of a trade mark infringement action. A quick Google search will do for starters. But if this doesn’t turn up anything obvious, get a trade mark lawyer involved to search the relevant trade mark registers for you. At this point, it is important to get a specialist involved, since it is not just registrations for identical marks that can prevent a bar to use or registration.

4. Register in each of your key markets

Finally, once you have carried out your clearance searches and you are happy with the results you can proceed to register your marks. Trade mark registrations can last indefinitely subject to use and renewal, and so it is important to get them right from the start. For this reason, most companies engage a trade mark professional to draft and file their trade mark applications for them.

It’s as easy as that! So why not set brand protection as a topic for your next board meeting and make sure your business is doing everything it can to protect this valuable asset?

Food for thought

Recent news that Cadbury has lost its current battle to uphold the registration of its iconic purple colour shows how important it is to get brand protection right from the start.

Cadbury had secured a trade mark registration for Pantone 2685c – introduced in 1914 as a tribute to Queen Victoria – but this registration was challenged by Swiss rival Nestlé on the grounds that it was too broad. Until now, Cadbury had managed to fight off the challenge. However, Nestlé won the latest round in this five year battle, arguing a technicality based on the unclear drafting of the application.

Cadbury will now have to try and appeal the decision or lose their registration.

Lousia Dixon is a solicitor at Taylor Vinters LLP with a specialism in brand protection.

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