Trade mark protection and management in an ideal world

In this article, we look at how companies might approach their trade mark portfolio if there were no limiting factors, the most obvious one being budget. We start at the point of selecting a new trade mark, briefly review what to consider when deciding what to protect, before addressing post-registration care. Each section summarises the considerations and potential problems at that stage in the trade mark life cycle, initially outlining the ideal scenario, before coming back to reality with some best practice recommendations for the commercial day-to-day.

At the beginning

You may have a dedicated brand development team, you may be doing everything yourself, or it may be somewhere in between. Whatever your situation, there are certain checks that should be done when you are preparing to adopt a new trade mark. ‘New’ comes in many forms: maybe it’s an existing trade mark that you want to use for a new product or service, it may be expansion into new territories, or it may be a completely new brand. Either way, thorough research at the outset can minimise the risk of unwanted challenges and consequent disruption at a later stage.

Is my trade mark available ... and is it protectable?

If you’re considering a completely new trade mark, you need to start from the very beginning which, as well as researching the availability of the chosen mark, includes assessing whether the trade mark that you want can be registered. If you think about the most successful trade marks, one thing that they have in common is their distinctiveness. Distinctiveness is difficult to define, but essentially refers to that special ‘something’ that enables the consumer to identify goods and services as coming from a particular trader or source, and differentiate them from goods and services offered by others. The purpose of a trade mark is to act as a badge of commercial origin, so it makes sense that words or phrases that describe the product, or characteristics of the product, won’t work. The best trade marks are invented – think KODAK, for example – with no obvious link to the goods or services in relation to which they are used, and which no other business would reasonably need to use. The more distinctive the trademark, the easier it is to protect by registration, and the easier it is to build up consumer recognition, reputation and market share.

What happens when you’re already using a trade mark, which may already be registered? You still need to ask the following questions:

Q: I already have a registration, but does it cover the new product or service?

Q: I already have a registration, but is it effective in the new territory?

If the answer to either of these is ‘no’, or even ‘I’m not sure’, action is needed.

What should I do?

In a word: research. You need to check the relevant trade marks registers for relevant applications or registrations that could prevent you, not only from using your trade mark as you want, but also from protecting it as you want. You need to do online searches, journal searches, competitor searches, company name searches. Failure to perform thorough preliminary checks runs the risk that conflicting rights will come to light at a later date, potentially disrupting your plans. The more committed you are to the new trade mark, and the more time that passes, the more disruptive such challenges will be, potentially leading to re-branding, financial sanctions and, in the worst case, expensive court action.

In the ideal world, a full availability search will be done for every new mark, whether it be a completely new trade mark, or the expansion of an existing brand to a new product line, or a new country, where the planned new activity isn’t covered by an existing registration. Trade mark attorneys are ideally placed to do the searches for you, as we have the experience and expertise to assess the output of both register and commercial searches, providing detailed guidance as to potential risks and how best to approach them. Clearance searches should be scheduled at an early stage of brand development, covering all of the trade marks that are being considered, and in all territories of interest: too many times have we seen clients do searches reluctantly and at the last minute – or worse, not do any searches at all – only to find that the trade mark in which they have already invested significant time and money is not in fact available.

While not infallible, a trade mark search will provide a good overview of the state of the register and of the relevant market at the time of the search, which in turn allows a thorough assessment of the risks, if any, associated with your new venture.

In the real world, a full availability search remains the best option for any new trade mark, including the expansion of an existing brand. However, we recognise that it may not be so crucial where an existing and potentially well-established trade mark is to be used on a new product, particularly when the new product is not so different from the existing products, or where a mark has already been in use for some time as an unregistered mark. While research is still recommended, it can often be toned down to reflect budget and time considerations. Whatever the level of the research, it still needs to be done early.

We offer different levels of searching depending on circumstances and requirements, including:

• our identical search, which may be suited to the use of an existing trade mark in an existing territory, but on a new product
• our more detailed UK availability search, which examines the UK, EU and International trade mark registers to enable the identification of potential barriers to either the use of a trade mark, or its registration, and our assessment of the severity of those risks and how to mitigate them
• our full clearance search, which covers everything in the availability search, but also includes searches of company names and domain names, which can assist in identifying unregistered trade marks

Searches can be conducted in any jurisdiction (instructed as appropriate through our extensive international network of trusted associates) and, where expansion into multiple new territories is required, we will prioritise the searching according to the importance of the market.

To register or not to register

Once your trade mark has been cleared for use and registration, what next? Many trade mark owners use their trade mark for years without registering them, and without any problems. But that doesn’t mean that registering a trade mark is a waste of time and money. Obtaining a registration gives several advantages, some of which are outlined below.

Monopoly rights

The grant of registration confers a monopoly on the trade mark owner, which means that no one else can use that trade mark, or anything similar to it, in relation to the goods or services for which registration has been granted, or even in relation to similar goods or services, without the registered proprietor’s permission. Commercially, this can be invaluable, and can be extremely beneficial in the context of licences and franchises.

Unregistered rights are tricky

It is significantly easier and cheaper to enforce a registered trade mark than it is to rely on common law rights. We cannot emphasise this enough. Relying on unregistered rights will almost inevitably mean a court case, with all the associated cost and inconvenience. The rights owner will have to demonstrate that it has relevant goodwill in the mark, and that there has been a misrepresentation by the third party that is liable to cause damage to the rights owner. In some countries, unregistered rights are not recognised at all, so a long-time user of an unregistered right could find itself in a position of infringing a later registered right. By contrast, and particularly in the case of unintentional infringers, inappropriate or infringing use of a trade mark can – in some cases – be brought to a swift halt simply by bringing a registered trade mark to their attention.

Useful deterrent

The existence of a registration can be an effective deterrent to would-be infringers. Not only is there publicly available evidence of the registration (and a registration certificate is prima facie evidence of the validity of the registration), but the registered owner (as well as any authorised users) has the right to use the ® symbol to identify the trade mark as being protected by registration.

Counterfeits and infringing products

Having a registered trade mark can make dealing with counterfeit products easier, as providing customs with details of a registration can simplify the seizure of infringing products. A registered trade mark is also required for online take down procedures, one such example being Amazon Brand Registry, whereby details of a registered trade mark are lodged with Amazon, making it quicker and easier to challenge the sale of infringing or unauthorised products.

What to register?

Most people accept that registration is a good thing. But what do you register?

In an ideal world, you would register everything. Every word, every logo, every stylised mark, every colour combination, every strapline. The registrations would cover every product and service in relation to which the mark will be used, and everything in relation to which it may or could be used. You register it in every market of interest. You monitor the use of your trade marks over time, and whenever you introduce a change, which may be a new colour scheme, a tweak to a logo, a change in orientation, new applications are filed to be sure that your trade mark portfolio always represents your business.

Advantages are maximum protection, maximum enforceability, minimum vulnerability. However, this comes with maximum cost.

In the real world, you must prioritise. Most probably on the basis of budget (while trade mark applications are cheap for the benefits they confer, the costs soon add up when variants are introduced, and registrations in multiple jurisdictions are sought), but also on the basis of the product life span (is it really worth registering a trade mark that’s only going to be used for one season?) and, where registrations already exist, the degree to which the new mark differs from the existing registrations.

The principle ‘protect what you use’ always applies, but there is still a hierarchy of protection. For example, the registration of a word or words in a plain, unadorned font will give the broadest protection for nearly every trade mark that includes text, as the scope of protection isn’t limited by the specific appearance of the text. Word marks are also typically required for platforms such as the Amazon Brand Registry. Likewise, if a mark is used in multiple colour combinations, registering just one variant may be all that is needed.

We can advise on and recommend filing strategies that optimise the protection of your trade mark portfolio, taking into consideration all relevant factors such as budget, timeframe and business plans.

Post-registration care

Success! Your trade mark has been registered, so now you get to sit back and enjoy the benefits, and if anyone treads on your toes, you just wave your registration certificate at them and they’ll go away. Right? Wrong.

You have to look after your rights. Assuming everything has gone according to plan, that your now registered trade mark is used in commerce in relation to all products and services covered by the registration, the renewal fees are paid on time, any required formalities are observed at the right times, relatively little should be needed by way of maintenance. However, things don’t always go according to plan: businesses are bought and sold, they merge, they fail, business plans change, products or services simply don’t work, logos change. There’s a myriad of reasons why a registered trade mark can be compromised, devalued, and even lost.

Using your trade mark correctly

How you use your registered trade mark is an important part of retaining the value of the mark, and the longevity of the right. Incorrect use can lead to a trade mark losing its distinctiveness, or becoming misleading, descriptive or generic in respect of the products it is used for. This not only devalues the registered right, it can lead to its cancellation.

Following a few simple rules will go a long way, and include:

• using the trade mark as an adjective, never as a noun or verb, or in a plural form
• differentiating the registered trade mark in both printed and digital materials from the rest of the text by using CAPITALISATION, bold text, a stylised font, colours, or any other device that helps the trade mark stand out from its surroundings
• using the ® symbol (or even ‘TM’), where the mark is registered
• including a statement of ownership
• register what you use, and use what you register
• clamping down on unauthorised or incorrect use of your trade mark

While it may not be practical to do all of the above all of the time, adopting a consistent approach gives the best chance of protecting the integrity, and therefore the validity and value, of the registered trade mark.

Use it or lose it

Problems can arise where a registered mark isn’t used for a continuous period of (in the UK and the EU) five years after it has been registered, where there is no good reason for the lack of use. A commercial decision not to sell something for a while doesn’t qualify as a good reason: it needs to be something out of the proprietor’s control, such as sales of the product becoming illegal. If an older mark is challenged, for example, in response to a notice of opposition, being able to provide solid evidence of the commercial use of the trade mark over the relevant period will be crucial to the continuation of the opposition or other conflict, as well as protecting the registered trade mark against cancellation.

Good practice includes keeping detailed records of the use of all registered trade marks, including invoices that include the trade mark, independently dated copies of promotional and marketing materials, catalogues and brochures, press releases, journal articles and so on.

Regular portfolio reviews

What can you do to avoid these problems? Essentially you need to stay top of the trade mark, by regularly reviewing the protection that you have, monitoring how the trade mark is used, and what it’s used for, and assessing whether there are any gaps in protection that need filling.

In an ideal world, you review on an annual basis all of your registered trade marks and, where changes are identified – which may be changes to the marks themselves, the products in relation to which the marks are used, or the places in which they are used – file new applications to ensure that the protection in place is always a complete and up-to-date reflection of your business. You’ll make sure that all trade mark use is correct and authorised, and you’ll take prompt steps to correct any transgressions. Where a prolonged period of non-use is unavoidable, consider whether you really need to retain that registered mark and, if you do, consider how best to revive the protection, potentially by re-filing, perhaps for a different scope of goods or services.

In the real world, most people do not review their trade mark portfolios regularly. Even where they do, there is rarely the budget to file new applications to fill in any gaps created by minor branding changes, or shifts in use. This of course runs the risk that changes accumulate over time, gradually increasing the distance between what is registered and what is used, and potentially reaching the point at which the registration no longer reflects the business, becoming both unenforceable against, and vulnerable to cancellation by, third parties. In essence, the registered trade mark is no longer performing its function as an identifier of commercial origin, and it becomes effectively worthless.

We recommend carrying out a regular review of all trade marks, with a particular focus on anything that is approaching the five year point, as well as older marks. We are pleased to offer a portfolio review service, which comprises a detailed assessment of the trade marks – both registered and unregistered – that you are using, considering these in the context of where the business is at present, your business development plans, industry trends and so on, with the aim of identifying and rectifying any gaps in protection to optimise your trade mark protection in the most time- and cost-effective manner.

Contact us for more information on any trade mark-related matter. Our experienced trade mark attorneys are able to advise on all matters from filing strategy and new applications through to oppositions and conflicts.

Author: Liz Lowe, Chartered Trade Mark Attorney