How To Protect Your Brand With Registered Trade Marks
A well-known, instantly recognisable brand is one of your business’ most valuable assets, setting you apart from your competitors and encouraging consumer loyalty. Purchasers are more likely to select goods or services originating from a trusted brand than one of which they have no experience, so your market share increases and, with it, your profitability. Take ‘Apple’, for example, whose brand value is estimated to be in the region of 880 billion dollars.
When you have invested significant time and money into developing and nurturing your brand, you must take steps to protect it. One of the quickest and most cost-effective forms of brand protection is a registered trade mark. Here, we explain how to protect your brand with a registered trade mark, the advantages you will gain by doing so and the level of protection you will receive.
What is a trade mark?
Trade marks are part of a parcel of rights known as intellectual property rights. They are used by businesses to inform consumers where the goods or services they are considering originate from and are essential to a successful brand protection strategy. Examples of well-known trade marks include ‘Coca-Cola’, ‘Kodak’ and ‘Pepsi’.
What can be protected as a trade mark?
To be eligible for trade mark registration, your proposed mark must be capable of distinguishing your offerings from those of other businesses and satisfy various other legal criteria. The mark must be distinctive, either inherently or by virtue of prolonged use (sometimes known as “acquired distinctiveness” or in the US “secondary meaning”). It cannot exclusively describe the goods or services it relates to, for example, ‘Apple’ for apples.
The strongest trade marks are fanciful or invented words, such as Nike or Lego, which have no relevance other than in respect of the specific goods or services they denote.
You can use trade marks to protect a wide range of business/marketing assets, including the following:
Words and Slogans
Businesses are often most keen to obtain trade mark protection for their brand name, being their most valuable asset. Other forms of branding that can be eligible for protection as a word mark are a trading name, specific product names and slogans. ‘Febreze’ is a registered trade mark of The Procter and Gamble Company, for example, and Nike’s ‘Just Do It’ is registered as a trade mark for a variety of goods and services.
Many businesses enjoy a significant reputation in the logo used alongside or independently of their brand name and obtain trade mark registration to protect the logo against copycats. The mermaid logo of Starbucks, the golden arches of McDonald’s, the swoosh logo of Nike and the interlocking ‘C’s of Chanel are all registered trade marks.
Product shapes or the shape of their packaging
In certain circumstances, provided the shape of the product or its packaging functions as a trade mark, this shape can also be registered as a trade mark. Examples include the ‘Coca-Cola’ bottle and the ‘Toblerone’ chocolate bar. Nestlé has however struggled to register the shape of its ‘Kit Kat’ chocolate bar demonstrating that it is not always an easy task.
In this area of intellectual property law, trade marks and design protection overlap, so it is well worth considering both.
If a particular colour or combination of colours denotes your product or service exclusively, it could be registered, as demonstrated by Cadbury’s distinctive purple colour trade mark for chocolate.
Some brand owners have sought trade mark protection for their jingles, or even distinctive noises, with varying success. For example, the ‘I’m Loving It’ jingle of McDonald’s is a registered trade mark.
What protection does a trade mark give?
Trade marks are amongst the most powerful of all intellectual property rights. They afford their owner a monopoly over the mark and, provided they are appropriately renewed, can last indefinitely.
However, a trade mark owner’s monopoly over their mark is not absolute. The UK trade mark system divides goods and services into 45 different classes. When applying for a trade mark, you must specify which classes you require protection in and, if successful, your registration gives you a monopoly over the mark for the goods or services within that class. Businesses often require protection in several classes. For example, Coca-Cola clearly needs protection in class 32 covering non-alcoholic beverages but given its extensive merchandising activities, The Coca-Cola Company also has trade marks in various other classes including class 16, which covers posters.
Once your trade mark is registered, unauthorised third parties are prohibited from using it in the following ways in the course of trade. If they do so, they may be liable for trade mark infringement.
- Using branding or a sign that is identical to your trade mark for goods or services that are identical to those for which you have registered it.
- Using branding or a sign that is identical to your trade mark for goods or services that are similar to those for which you have registered it, or branding or a sign that is similar to your trade mark for goods or services that are identical to those for which you have registered it, and in both cases there exists a risk of consumer confusion.
- Using branding or a sign that is identical or similar to your trade mark for goods or services that are not similar to those for which you have registered it, but where the third party’s activities take unfair advantage of your trade mark’s reputation, or causes it other types of damage. To succeed in establishing infringement under this heading, the trade mark must have a reputation in the UK, so this protection is more likely to assist well-established brands than start-ups.
What are the advantages of protecting your brand as a trade mark?
Unlike other types of intellectual property rights, such as copyright, that arise automatically and for free, trade mark registration comes at a cost. However, the investment is fairly modest, and brand owners usually consider that the distinct advantages their trade marks provide justify the expenditure.
Examples of the advantages of protecting your brand as a trade mark include the following:
- A well-protected brand encourages consumer trust and loyalty
Protecting your brand gives your consumers peace of mind that the goods or services bearing your trade mark originate from you and will be of the quality associated with your brand, rather than a cheap imitation.
- Trade mark registrations avoid confusion in the marketplace
When your brand is protected by registered trade marks and less vulnerable to copying, the likelihood of consumers purchasing goods or services from third parties believing them to be yours is reduced. As a result, your reputation and profitability are protected.
- Trade mark registrations deter copycats
When your trade mark achieves registration, it will be entered into the UK Trade Marks Register, and you will have the right in the UK to use the trade mark symbol ® in connection with the relevant goods and services. Third parties are accordingly alerted to your trade mark, either following a search of the Register or when encountering your offerings. As a result, they may be less likely to copy your branding, aware of the potential legal repercussions.
- Trade mark registrations prevent brand dilution
When third parties are deterred from copying your brand, the marketplace is less likely to become swamped with copycats and your brand retains its exclusivity.
- You can rely on trade mark registrations in legal proceedings against copycats
When third parties use your registered trade mark without your permission, whether knowingly or otherwise, they may be liable for trade mark infringement. Often, a letter from a solicitor to the infringer detailing your rights and informing them that you will pursue legal action if they do not cease their activities is enough to resolve the issue. If they persist, you can consider issuing Court proceedings asking the Court for an injunction prohibiting any further infringements, delivery up or destruction of all offending material, and damages.
An action for trade mark infringement is a much cheaper, less time-consuming and simpler way of enforcing your trade mark rights than a passing off action based on your unregistered rights.
- A comprehensive trade mark portfolio makes it easier to commercialise your brand
Despite their intangibility, intellectual property rights can be commercialised in the same way as any other business asset. Many large brands operate licensing programmes whereby they allow third parties to use their intellectual property in respect of specific goods, in return for a fixed fee or royalties. Potential licensees will expect to see a well-managed intellectual property portfolio to reassure them that their investment is protected, and a series of registered trade marks are some of the best assets you can use as leverage when negotiating a licencing deal.
How do you obtain a registered trade mark?
Trade marks are territorial rights, so trade marks registered in the UK only provide protection here. If you operate in several countries, or if you trade online, you may need to consider registering your trade marks in several different countries.
A general overview of the procedure for registering a trade mark in the UK is as follows:
- Do your due diligence
Before you submit your trade mark application, you must confirm that there are no earlier trade marks that are the same or too similar to your proposed mark to cause issues. It is advisable to do so by asking your legal advising to carry out a thorough search (called a “clearance or availability search”) of the Trade Marks Register.
You should also consider the marketplace in which you operate, as there may be earlier unregistered trade marks in use which equally conflict with your chosen mark.
Ideally, you should carry out this due diligence at the early stages of brand development. It can be disastrous to spend time and money on developing a brand and even launching it, only to subsequently discover that a third party owns the trade mark for it. You would need to rebrand, thereby wasting the resources spent on getting to the launch stage, and potentially losing the goodwill associated with the brand. If you continue using your branding notwithstanding the existence of the registered trade mark, you risk facing the legal consequences of infringement.
- Consider who should own the trade mark
You must give careful consideration to who should own the trade mark, particularly if you own several connected businesses. A trade mark can be cancelled if its owner has not used it for a specified period of time. Therefore, if you inadvertently register your mark in the name of the incorrect business, the mark might be cancelled, even if it has been used extensively by a connected entity. You should select the business with which the mark is most closely linked to be the trade mark owner or put in place licensing arrangements.
- Prepare your application
When your due diligence is complete, a trade mark application will need to be prepared for filing at the UK Intellectual Property Office (the IPO), the body responsible for registering trade marks in the UK.
Your application must contain a representation of your proposed mark, together with a ‘specification’ listing all the goods and services with which you intend to use the mark. The specification is a crucial aspect of your application, since it defines the scope of the monopoly your trade mark will provide. It is, therefore, vital that you include all goods and services currently relevant to your commercial operations, as well as those into which you intend to expand in the near future. However, if your specification is too wide, and includes goods or services not relevant to your business, the IPO may reject your application or your trade mark may be vulnerable to cancellation for non-use. You need to strike a balance between seeking a monopoly broad enough to protect your business interests and not casting your net too widely.
- Send your application to the IPO
Once your application is complete, it will be sent it to the IPO. On receipt, the IPO will check that you have provided all relevant information and that your application appears coherent and logical. They will confirm that the trade mark fulfils the registration criteria and is not too similar to any trade mark already on the Register. All being well, the application will be published in the Trade Marks Journal. Any third party who objects to your mark – because it is too similar to their existing one, for example – can raise a formal opposition at this stage.
How long it will take for your trade mark to be registered depends on various factors, including any backlog at the IPO and whether your application is straightforward or encounters issues, such as an opposition. The process for simple, unopposed applications is relatively swift, and you can expect your mark to be registered in a matter of months.
- Deal with any oppositions
Your trade mark application can be opposed on either absolute or relative grounds. Absolute grounds include that the proposed mark is non-distinctive or descriptive, so should be available to anybody operating in that industry. Relative grounds relate to the proposed mark conflicting with an earlier one. Anyone can raise an opposition on absolute grounds but only the holder of the relevant earlier right can oppose on relative grounds.
An opposition must be raised within two months of the application appearing in the Trade Marks Journal, but this can be extended to three months if the opponent files a Notice of Threatened Opposition within the initial two-month period. If you intend to defend your application, you must file your Notice of Defence and Counterstatement within a further two months. Either party can suggest the matter is put on hold for a nine-month ‘cooling off period’ to facilitate settlement discussions. The cooling off period can be extended up to a maximum of 18 months, and either party can terminate it at any time.
If the opposition proceeds, the parties follow the timetable for filing evidence and submissions. The Trade Marks Tribunal subsequently considers the matter, either by reviewing the documentation or at an oral hearing, following which the Hearing Officer delivers their decision, which is open to appeal.
Many trade mark oppositions are resolved between the parties during the cooling-off period, often by way of Co-existence Agreement, whereby they each recognise the other’s rights to use the branding, subject to restrictions.
How much does it cost to register a trade mark?
The IPO currently charges £170 to apply to register a trade mark in a single class, and £50 for each additional class. Given the complexities of trade mark law and the intricacies of the UK trade marks system, most businesses enlist the help of an intellectual property solicitor to prepare the application and deal with any resultant issues. Your solicitor’s fees are payable in addition to those of the IPO.
How long does trade mark protection last?
Trade mark protection lasts for an initial period of ten years, but a mark can be renewed indefinitely on payment of the requisite fees.
A strong brand is crucial to your business’ success, and protecting it with a registered trade mark should be high on your priority list. A carefully managed trade mark portfolio encourages consumer loyalty, protects your place in the market and enables you to effectively commercialise your brand. The registration process is quick, relatively inexpensive and, when you work with experienced intellectual property solicitors, largely stress-free.
How we can help
At the Jonathan Lea Network, we can:
- Conduct trade mark clearance searches
- File trade mark applications to register a brand name, trading name, logo or other trade mark and manage the process through to registration (in the UK and overseas)
- Assist in opposing registration of someone else’s conflicting mark or defending you against such threatened opposition
- Assist in post-registration matters, for instance, non-use cancellation, consents, limitation of the specification of goods and services
- Take action to prevent the use of your trade mark or similar mark by third parties
- Defend you if you are accused of using someone else’s trade mark
- Advise you in choosing an appropriate trade mark – some trade marks are legally stronger than others
- Assist in the exploitation of your trade mark, for instance, licensing, sale, mortgaging, franchising, etc
- Assist with the renewal of your trade marks
For all new clients, we offer a no-cost and no-obligation call of up to 20 minutes to first discuss your matter and requirements before confirming a scope of work and quote. This can be arranged by sending your details together with an overview of your matter through our contact form.
This article is intended for general information only, applies to the law at the time of publication, is not specific to the facts of your case and is not intended to be a replacement for legal advice. It is recommended that specific professional advice is sought before relying on any of the information given. © Jonathan Lea Limited 2024.