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The protection of brands has never been so important. Courts in the UK and further afield are increasingly ready to recognise the financial value of a trade mark which, when the brand is well-known, can be immense.
In this climate, taking the necessary steps to protect your trade marks is essential to keep ahead of the competition.
When looking to launch a new brand, a two-stage process is recommended.
First, you should conduct clearance searching to establish whether your proposed brand is free not only to register as a trade mark, but to use. Checking that adoption of your proposed name or brand will not infringe the rights of others is at least as important as protecting your own use of it.
The second stage, assuming the clearance searching does not identify any problems, is to apply to register the name or brand as a trade mark.
Having a registered trade mark ensures that no-one else can use the same or a similar name in your sphere of interest. This leaves you free to build up recognition, reputation and goodwill in the brand, without concerns about third parties unfairly tarnishing these assets by picking names that are too close.
If you have not yet registered your key brands as trade marks, or have not reviewed your intellectual property for some time, here are some points to consider:
- What are your most important names, logos and acronyms? If you registered a trade mark many years ago, is that registration still relevant to what you are doing now? Does it cover the goods and services you are currently interested in, as it is very common for these to change over time?
- Are you protected in the right territories? Many organisations begin by registering their trade marks in the UK, but neglect to expand protection further afield as the business grows. It’s not unusual for a charity to expand into a particular country, and find its activities are stymied because another, possibly local, operator has already registered the same or a similar brand. If you are expanding into new territories, it’s always best to consider the trade marks position sooner rather than later.
- Do you have a watching service? Once your trade marks are registered, you need to police them. A watching service will advise you of anyone else trying to register trade marks that are too close to yours. This gives you the opportunity to object to their registration. Also, someone trying to register a trade mark often serves as an early warning that they are about to start, or have just started, using it. This gives you the opportunity to raise objection to that use as well, before it becomes too big a problem.
- Have you considered domain name registration? This does not guarantee a right to use a trade mark, but because the system operates on a first-come, first-served basis, it makes sense to steal a march on competitors and avoid cybersquatters. You may have registered a .co.uk domain. Also, have you thought about whether you should register global or regional domains, such as .com. org, .eu or .asia, to reflect your growing international presence?
Mathew Healey is a Trade Mark Attorney at Bates Wells and Braithwaite. www.bateswells.co.uk