The recent announcement by the Community Trade Mark Office (OHIM) that it will be reducing its charges for registering trade marks in Europe will make the process of registering trade marks in Europe more affordable for business of all sizes. However the registration of a trade mark should be only one part of your branding strategy. Here are 6 issues to consider:
1. Do your research.
You wouldn’t invest in a new business without thoroughly researching the market first, and the same should apply to new brands.
You should carry out a few basic searches. Start with a search for your proposed brand name on an internet search engine, and then check your competitors and companies in your industry. A basic trade mark search can be done for free at http:/www.ipo.gov.uk/tm and it is also worth checking at Companies House to see whether similar company names have been registered. You are looking to see whether anyone is using your proposed brand name or anything similar to it, in the same or a similar industry to the one you’re in.
If you find that someone else is already using your proposed brand in your area of interest then now is the time to change it as it is usually expensive and problematic to change a brand after you have been using it for some time.
2. Choose your brand with care
You don’t need to apply to register your brand name as a trade mark, but it is likely to add value to your business if you do so it makes sense to choose something that you can register.
A trade mark will not be granted if it is too descriptive or if it is too close to someone else’s mark. The best trade marks are therefore likely to be completely original, made up words which do not describe what your business does.
3. What kind of brand protection do you need?
It is possible to apply for a trade mark in the UK, for the whole of the EC and in individual countries worldwide.
Whilst the European Trade Mark Office has announced that it will be possible to obtain a European Community Trade Mark (a CTM) for around €1000 rather than the previous €1600, many businesses will not need a trade mark for the whole of the EC if the business only operates in the UK and it will therefore be cheaper and quicker just to apply for a UK trade mark.
Additionally, if you will only be using a brand for a short period of time for example for a one-off promotion or event then it may not be economical to apply for a trade mark particularly if your budget is limited. In either case there will be other steps that you can take to protect your brand.
4. Use your brand correctly.
Whether your brand is registered as a trade mark or not it is extremely important that you use it properly. If your brand name is registered then you may weaken the registration by not using it properly and if it is not registered you will maximise the goodwill and reputation that you build up under the brand.
The brand should always use the brand name consistently, and if it is registered then it must be used exactly as it has been registered. Every effort should be made to differentiate the brand from other text by having it appear in a different font or colour and by using the ™ and ® symbols for unregistered and registered brands respectively.
The brand name should also always be used as an adjective, not as a noun. For example, the “Brand Name” product or the “Brand Name” service.
5. Make sure you own what you use.
Businesses often use third parties to design logos, brand names and websites and these will be protected by copyright.
A common mistake is not to have any agreement about who will owner that copyright. As the basic default position is that the copyright will be owned by the person who created it and not the person who paid for it this can be a serious problem. The way round it is to agree up front and in writing who is to own what.
6. Monitor your brand.
You will invest lots of time and money in your brand so it makes sense to take steps to ensure that no one else takes advantage of it by using the same or similar.
This is usually a question of ensuring that you and your staff keep an eye on the competition although more sophisticated watching services can be set up. Enforcing your rights does not need to be costly; a well worded letter can often get the result you require and sometimes some compensation too.
However, you must be very careful when you allege (for example) that a registered trade mark has been infringed as the law states that the person you threaten to commence proceedings against may, in some circumstances, be able to take action against you for making groundless or unjustified threats.
About the Authors: Nick Phillips is a Partner and Sarah Shears is a Solicitor in the IT/IP group of the Surrey based law firm Barlow Robbins LLP. Both Nick and Sarah specialise in Intellectual Property and IT work.