Does my Business Need a Trade Mark?
Brand protection, most business will have it in my mind as a great deal of time and effort goes into creating any brand. You will have worked hard to gain a reputation for your goods and/or services, in particular to hopefully make your customers and potential customers associate the business’ name and branding with the quality of its goods and services.
Having worked so hard on creating a brand and the reputation of that brand, the big question is how do you best protect it?
The ideal is to obtain trade marks over the key identifiers of your brand. I would normally recommend the business or brand name and any associated logo.
Historically many businesses have seen trade marks as the domain of multinationals or other large businesses, because there is a natural assumption that such things are expensive. However, UK trade marks, and even EU trade marks, are not enormously expensive, particularly when held against the benefits of protecting your brand. As a rough guide, UK trade marks can be obtained for as little £1,000 plus VAT (including legal fees and official filings fees). It rather depends on whether there are any issues with the application and/or on what the goods and services to be covered by the trade mark are.
What can/should I trade mark?
You can register just about anything that can be represented graphically and which is capable of distinguishing your goods or services. The most common brand identifiers to be trade marked are business names and logos, but it can be the names of products or product lines, slogans or even a particular colour (although this is rare!).
There are some common bars to registering something as a trade mark. In my experience, the most common issues are that the potential trade mark is actually descriptive of the goods or services which it is intended to cover or is non-distinct, or that someone already has a similar trade mark for similar goods or services.
What are the benefits of having a trade mark?
Primarily a trade mark is there to prevent others from using your brand or trying to imitate your brand, which is called an infringement. Generally this means preventing others from using an identical or similar mark on identical or similar goods and services. Unless the mark and goods and services are identical, you will also have to show that there is a likelihood that the public will be confused by the similarities.
Having a trade mark will also typically give you notice of others trying to register potentially similar trade marks and therefore give you the opportunity to oppose those applications before they are granted.
Trade marks are also an asset of the business, and can offer opportunities for further revenue streams by, for example, licencing others to use the trade mark.
Finally, if you are just starting up your business, conducting trade mark searches and/or applying for trade marks at an early stage will help identify any conflicts with existing trade marks. Whilst this may be unwelcome news, it is better to identify this early before a lot of time and money is invested into a brand which may have to be changed if the existing trade mark owner takes action.
What happens if someone copies my brand?
If you have a trade mark then you can bring an action for trade mark infringement. There is obviously a lot that goes into this but ultimately if someone is found to have infringed your trade mark then you should be able to obtain an injunction to prevent this going forward and damages for either the losses they have caused to you or the profits they have gained by copying you.
You won’t necessarily have to take the matter to Court either, as the vast majority of claims, particularly if the infringement is clear, are resolved by correspondence.
The key is to take action as soon as you find an infringement, as the longer someone trades using an infringing name or mark the more entrenched they become and the harder it can be to resolve the matter without Court proceedings, which is a more expensive means of obtaining the outcome you want.
What if someone copies me but I don’t have a trade mark?
You can still take action! If you don’t have a trade mark then you may still have rights under what is called passing off. This is a harder claim to bring but there are plenty of examples of successful passing off actions.
- Identify your key brand identifiers. In doing so, and before seeking trade mark protection, it is good to consider whether you should update or change your branding. Whilst by no means my area, I’m sure any graphic designer will tell a business of the importance of having consistent branding.
- Budget permitting, look at obtaining trade marks to protect your key brand identifiers. Most, if not all, IP specialists will have a free initial conversation to help you understand if there are any likely barriers to your proposed trade marks and what level of costs you are looking at.
- Take practical steps to monitor for infringing activity. This includes keeping an eye on known competitors, but also setting up search engine alerts to flag new content which comes up under a search of your brand name. You can also look at buying similar domain names to your own to prevent others obtaining them.
About the author:
Stephen is an Associate in the Intellectual Property and IT team, having joined the team following completion of his training contract with the firm. Prior to joining Howes Percival Stephen worked in-house for several years.
Stephen advises on both contentious and non-contentious IP and IT matters, including registering and protecting trade marks, infringement actions involving copyright, trade marks, patents and designs, and agreements for commercialising IP.