Why Register a Trade Mark?

Brands are highly commercially valuable, with the top global brands, such as Apple, Nike and Audi, being worth billions of pounds. This isn’t surprising given that consumers look to brands for reassurance when making purchasing decisions in increasingly product saturated markets. Accordingly, generating customer brand loyalty is a prime concern for manufacturers and retailers, and protecting a company’s brand portfolio is critical to the commercial success of many businesses.

Every business, large or small, will have a brand, or several brands. Each of these brands should be protected as a registered trade mark. A registered trade mark gives the owner the exclusive right to use its brand and, by extension, the legal right to prevent third parties from registering and/or using an identical or similar brand for identical or similar goods or services to those covered by the trade mark. It also provides the owner with the exclusive right to license, franchise, or sell its brand. These rights protect the brand and help prevent confusion among consumers. A registered trade mark allows for products and services of different businesses to be distinguished from each other, enabling customers to identify the source of those products or services in the marketplace and to repeat their purchasing experience.

Failure to register your brand as a trade mark may result in the following:

• Being unable to effectively enforce your rights. Without a registered trade mark, you would need to rely on unregistered trade mark protection which, in the UK, is available through the law of passing off. However, bringing an action for passing off is a more costly route to follow. For such an action to succeed, you need to show goodwill in the UK, compared with simply showing a registered trade mark certificate in an infringement action. Additionally, an action for passing off can only succeed if there is a misrepresentation, whereas this element is not required in trade mark infringement proceedings where the third party is using an identical mark for identical goods or services. As a consequence, the scope of protection afforded by passing off is more limited and enforcing such rights is more costly than pursuing a registered trade mark infringement claim.

• Loss of revenue/sales. If you are unable to prevent third parties from using a brand which is identical or similar to yours, this could cause confusion amongst the public. Consumers may assume that the third-party product or service originates from you and purchase that third-party product or service rather than yours. Further, if the third-party product or service is of a poor quality, this will damage your brand and deter customers from buying your goods or services.

• Difficulties in extending your brand into other areas. This can happen if a third party has acquired earlier rights which prevent your use and registration of your brand for further goods or services. With registered trade marks, you can file your trade mark for more goods and services than you currently use it for and this, in essence, gives you rights in goods and services you are not yet offering. You can also register trade marks in other countries before you trade there, which would allow you to move into those countries at a later date, rather than waiting and risking a third party registering a brand which would prevent your entry into that new market.

• Lower business valuation. A lack of registered trade marks may reduce the value of your business when it comes to taking in investment or selling the business. Having a strong, enforceable brand will provide your business with a valuable asset.

When seeking to register a trade mark, there are a few points to consider:

• Should an availability search be undertaken? It is advisable when adopting a new brand to conduct a search for any earlier identical or similar registered marks to make sure that no third party can prevent your use and registration of your brand.
• What representation of the mark should be filed? This could be a logo or word mark, with word marks often providing the broadest protection.
• What goods and services should be covered? This should be what goods and services you are presently offering or intending to offer, what you may offer over the next 5 years, and what you would like to prevent third parties from doing under an identical or similar brand.
• Where should you file? Consider which countries you are trading in and are likely to expand into in the coming years.
• Should you file for a national or international trade mark? If you are filing in more than three countries, it is often more cost effective to file for an international trade mark, but there are other advantages and disadvantages to this approach which need to be considered.

Our services – what we can offer

• Advice on filing strategies, including what trade marks to register and in what classes and covering which countries.
• IP Audits to determine what measures are needed in order to protect your brands.
• Filing of trade marks in the United Kingdom and internationally, either through the Madrid System for international trade marks or national filings directly through our correspondent foreign law firms.
• Undertaking clearance searches to determine if you are free to use and/or register your trade mark.
• Dealing with any objections to the registration of a trade mark from the various Intellectual Property Offices around the world.
• Taking action (infringement, opposition or invalidation proceedings) against other trade marks which conflict with your intellectual property rights and/or defending such actions on your behalf.
• Managing your trade mark portfolio to ensure that your trade marks are renewed when required and that any similar trade marks which may encroach on your rights are brought to your attention so that you may instruct us to deal with the same in a timely fashion.
• Drafting trade mark licences and assignments.
• Undertaking due diligence with regard to the intellectual property portfolios of any businesses you may seek to acquire.
• Delivering legal updates on intellectual property matters via our complimentary newsletter and website articles.