How to Protect Your Brand and Reputation:
Brands, Reputation and Registered Trade Marks
There's no doubt that brands are important. We are surrounded by brands. According to the advertisers, we define ourselves by the brands we choose. But a "brand" is more than just an image created by clever marketing. "Brand" has come to mean everything that comes to mind in relation to a company, a product or service, including product quality, delivery, customer service, price and image. In fact, you could say that the brand enshrines the reputation of the company, product or service.
Although the brand as such could include much more than just a trade mark, the trade mark is a key component, if not the key component, of a brand identity. Hence the importance of registering a trade mark, which provides legal protection against unauthorised use of a trade mark, helping to keep a brand identity distinctive and exclusive in the market place.
A registered trade mark provides a powerful weapon to deter and combat competitors who would wish to divert your sales and ride on the back of your hard won reputation.
What is a registered trade mark?
A registered trade mark is a sign which has been accepted by a government body as being capable of distinguishing the goods or services of one undertaking from those of another. Registration gives the proprietor the exclusive right in law to use the sign in respect of a set of specified goods and services. Another way of putting it is that a trade mark is a 'badge of origin' which tells customers about the origin of the goods or services.
What is registrable?
To be registrable, the sign must be capable of being represented graphically. Thus, signs can take the form of letters, words, pictures, logos, product shapes, musical notation representing sounds and even smells and gestures.
The two main criteria for trade mark registration
To be registrable, a trade mark must be:
- distinctive for the goods or services for which it is to be registered
- not identical or confusingly similar to any marks already registered for identical or similar goods or services
A trade mark has distinctive character if it does not consist exclusively of signs or indications which are descriptive of the goods or services for which it is to be registered.
A trade mark is confusingly similar to an earlier mark if the marks are similar in some aspect whether visually, aurally and/or conceptually, and the goods are similar, so that there is a likelihood of confusion on the part of the public.
Thus, similar marks can be registered, if those marks are for goods or services which are sufficiently distant from each other in the market place that there is no likelihood of confusion on the part of customers. Think of POLO – a well known mint, a car and a shirt, with no confusion on the part of customers as to the origin of the goods because the goods are so different.
Trade mark searching – or how to avoid nasty surprises
It is vital that, before adopting any new trade mark, you make sure that you are free to use the mark by undertaking both general searches and searches of trade mark registers. Otherwise, you may be in for a nasty surprise when a letter alleging trade mark infringement lands on your desk. Trade mark attorneys are expert in undertaking searches and interpreting the results of searches.
We can provide a range of searches, from initial screening of multiple marks to detailed full clearance searches including our professional opinion on the relevance of the marks located and the possible risks involved.
Call us on 02476 992662 or email us for more details.
What to do next?
When you have determined that a mark is clear to use, then an application for registration can be prepared. The application includes a specification of goods and or services, which should include all those goods and services for which you use or propose to use the mark. The goods and services are divided into 45 classes. The cost of the application will be dependent on the number of classes.
Filing costs for a UK Trade Mark application are usually around £350 to £450 plus VAT (inclusive of official fees) for an application in a single class of goods and services, and for a Community Trade Mark application are around £1000 to £1200 plus VAT inclusive of official fees for an application in up to three classes. Additional classes incur extra cost.
If you would like to find out more, call us on 02476 992662 or email us for more details.
Where to file?
An initial application could be a UK application to obtain a UK registered trade mark, covering the UK only, or a Community Trade Mark application to obtain a registered Community Trade Mark, covering all the countries of the European Union.
Trade mark examination
After filing, the application will be examined for registrability.
An examiner can object to the application if the trade mark is considered exclusively descriptive. The examiner will also undertake searches for earlier conflicting marks, but cannot reject the application on this basis. If any earlier conflicting marks are found, the examiner will inform the proprietors of those earlier marks of the application. The application will be published, and there is then an opposition period in which oppositions can be filed. If no opposition is filed, the application will proceed to registration.
What if an 'opposition' is filed?
If an opposition is filed, there will be an initial cooling off period in which the parties can seek settlement by negotiation, and this period is extendable. If settlement is not reached, the opposition proceedings will continue, comprising the compilation and submission of evidence and written submissions by both parties, and in the UK, possibly culminating in a hearing. Opposition proceedings can become relatively expensive, running into several thousands of pounds in the UK, but oppositions are often settled at a relatively early stage.
TRADE MARK WATCHING SERVICES
or email us
to ask about trade mark watching services
After registration, it is up to you to monitor your market place and take action to stop infringers. However this need not involve a very expensive court procedure – very often infringers will cease their activity when notified of the existence of your IP rights (IPR).
It is also up to you to monitor and take action against new trade mark applications which may filed for similar marks, although both the UK Intellectual Property Office (IPO) and the European Community Trade Marks Office (OHIM) will notify proprietors of applications filed for similar marks which are deemed to potentially conflict.
Trade mark watching services
We can provide watching services which monitor the publication of trade mark applications in specified jurisdictions, to ensure that appropriate timely action is taken.
Tim Blower, Trademark Attorney offers advice about trade marks at the ITMA stand in Birmingham