Protecting your brand with trade marks can provide sustainable competitive advantage in business as well as increasing brand identification throughout the marketplace. Companies that create, register, and monitor their brand names stand to gain both increased market share and profits. Below are some tips that should be borne in mind for brand protection:
- Avoid the temptation to pick a brand name that describes your goods or services. Get creative and try to devise something that is suggestive or allusive or even better pick something that has nothing to do with the goods and services or is an entirely invented term. While it might take a little longer to educate consumers about your brand, it will be worth it from the point of view of Trade Mark registrability and enforcement.
- Once your brand is created, check with your IP Practitioners as to what elements of the brand may be protected. Do not assume that a logo or a tagline cannot be protected. Remember, anything that can be represented graphically can be the subject of Trade Mark Application. In this regard you may have more than one Trade Mark for which protection can be sought.
Check before using
- You should never use a brand without first carrying out searches in order to check the availability for use and registration of a particular name/logo/tagline. Initially, brief Internet searches are recommended to check for any third party use along with searches to check the availability of the relevant domain name. Once these preliminary searches have been carried out, a search of the Trade Mark Registers in the relevant jurisdictions of interest are recommended. These searches will identify whether there are any third parties that hold Trade Marks which may be the same or confusingly similar to your proposed brand.
- Do not assume that a search on the company name, business name or domain name registers are sufficient to clear a brand for use and/or registration as this is not the case. Searches on the relevant trade mark registers are also required. Even where you do not proceed with a Trade Mark registration, a clearance search is a must spend in order to ensure that you are not stepping on anybody’s toes before commencing use.
- The only way to obtain exclusivity in relation to your brand is by means of a trade mark registration. A trade mark registration will give the owner exclusive right to use the mark in relation to the goods and service covered under it.
- Trade Marks registrations are generally obtained on a country by country basis. For example, a Trade Mark registration in Ireland covers the 26 counties of the Republic of Ireland only and if you are using your Trade Mark in Northern Ireland, a separate UK Trade Mark Application would be required or alternatively an EU wide Trade Mark Application. This is also relevant for searching. Simply because a Trade Mark search has proved clear in the Republic of Ireland, this does not mean that the Trade Mark is clear for use/registration in other jurisdictions. As your business expands into new jurisdictions, new clearance searches and Trade Mark Applications should be put in place in each of the countries where the product and/or service is on offer.
- Once the Trade Mark is registered, you should always use the Trade Mark in the manner registered. Where a Trade Mark is used in different forms from the registration this can pose problems from a registrability and enforcement perspective. Legally, use in a form different from the registration might render the Trade Mark vulnerable to cancellation by a third party.
- Be careful with respect to third party use of your Trade Mark. Use by a third party of your registered Trade Mark should only be done under licence in order that you retain control over the brand identity and the manner in which it is used. If third parties are allowed to use the Trade Mark in the absence of a licence, this will dilute the protection afforded to the Trade Mark and depending on the nature of the Mark, could in some instances lead to genericism.
- Never ignore correspondence received from a third party in the manner of a cease and desist letter. Do not bury your head in the sand. Always contact your IP Practitioner as soon as any such correspondence is received in order that you can obtain a measured and expert opinion as to the merits of the case.
Bear in mind the above and you should have a strong Trade Mark from a legal stand point which is cleared for use, easier to register and ultimately enforceable against third parties. Your IP Practitioners are available to assist with all of the above steps and do not be afraid to pick up the phone. They can give guidance at all stages advising on the strength or weakness of a proposed Trade Mark, clearance searches, registration and enforcement.
If you would like to learn more on this issue, please contact Carol Gormley, European Trade Mark Attorney.