Brand protection: 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 Nestl? on the grounds that it was too broad. Until now, Cadbury had managed to fight off the challenge. However, Nestl? 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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