(This article was written for AIB Business. The original article was published on September 3, 2015 and can be viewed here.)
As the global marketplace becomes increasingly saturated, the loss of sales and customers to competitors continues to pose a serious risk to many businesses. The benefits of leveraging your intellectual property in order to both attract and retain customers are widely reported, but where does the role of the company trade mark come in?
A trade mark is an identifier of your company brand(s) and can provide the most sustainable competitive advantage in business. Companies that create, register, and monitor their trade marks stand to gain both increased market share and profits. However, as with any other company asset, time and investment is required in order to implement a successful company trade mark. Below are five issues that should be borne in mind when developing an effective company trade mark:
1. Adopting a Trade Mark
When adopting a trade mark:
i. Create a Strong Trade Mark Name
Avoid terms that are descriptive, or generic, in relation to the products or services for which the trade mark will be used. A trade mark that is generic or highly descriptive will not be effective in the marketplace and is unlikely to give much of a competitive edge. While it may make sense from a marketing perspective to utilise a trade mark that immediately identifies the nature of the products/services provided by the brand, ultimately such a trade mark will be difficult to register and to enforce against third parties. Thus, the less descriptive the trade mark the better.
Kodak is a good example of an effective, non-descriptive trade mark. This invented mark, which has nothing to do with the products manufactured under the brand, is considered a strong trade mark name from a legal perspective. Understandably from a marketing perspective, these types of trade marks are less appealing, as a considerable amount of investment and time is involved in educating the public and raising consumer awareness as to the nature of the products and services provided under the brand. However, in the long run, these trade marks are extremely effective in legally securing a company’s marketplace position.
ii. Ensure the Trade Mark is Not in Use
A trade mark that is already in use or registered by a third party will not be effective in the marketplace. Once a trade mark has been decided upon, it is always advisable to carry out searches online and on the Trade Mark Registers of the main markets of interest in order to ascertain the availability to use and register the trade mark. This is very important as these searches will ensure that you are not “stepping on anybody’s toes” and potentially making your company vulnerable to an infringement action. Both general Internet searches, and searches carried out by Intellectual Property (IP) Practitioners, will ensure that the trade mark you choose is free to use and register, thus cementing the efficacy of the trade mark from the outset.
iii. Register the Trade Mark Appropriately
A trade mark will not be effective if it is used and/or registered in an inconsistent manner. When choosing a trade mark, a company should focus on a specific word or logo that will be consistently used to represent a particular product or service. One simple specific word or logo, or indeed a combination of a word or logo, which is used everywhere in relation to the advertising and sale of a particular product or service is advantageous in terms of the future protection and enforcement of the trade mark.
2. Applying for Protection of a Trade Mark
An effective company trade mark requires protection. As mentioned above, once a company has decided on a trade mark, it is advisable to apply for registration in the main markets of interest. It is possible to file a trade mark application for anything that can be represented graphically. In this regard, multiple trade mark applications can be filed by any one company to protect graphics across an entire product portfolio. However, this will, of course, impact on a company’s budget, so it is best to first focus on a specific word or image and obtain protection in this core trade mark before considering additional marks such as taglines, sub-brands, etc.
The main reason for registering your company mark is to obtain exclusivity in a certain marketplace class for your specific products and services, thus enabling your company to prevent any third parties from using any identical or similar words or graphics for identical or similar products and services. Trade mark protection is, therefore, a means of providing companies with a competitive advantage in the marketplace. In addition, a trade mark registration is considered an asset of the company that can be sold and transferred as with any item of real property.
3. Monitoring Your Trade Marks
An effective company trade mark requires monitoring and policing. After clearing and registering your trade mark for use, a company trade mark should be monitored online and in the marketplace to avoid any competitive entity infringing on your property. In terms of policing trade marks, while companies can carry out searches online, it is also advisable to discuss the policing of your trade mark with your IP Practitioner as there are a number of options available, in terms of online surveillance and watching services, to identify third parties using or attempting to register trade marks that are identical or similar to your own.
Any infringement activity online or in the marketplace should immediately be brought to the attention of your IP Practitioner for further advice. It is often the case that a cease and desist letter can quickly put an end to such activity. Your aim should be to keep the marketplace free of any third parties using an identical or similar trade mark for identical or similar products or services, thus sustaining your competitive advantage.
4. Review Your Trade Mark Portfolio
An effective trade mark should be reviewed regularly with the company’s IP Practitioner to ensure that protection is up to date and relevant. This provides an opportunity to discuss whether there are any gaps in protection, for example whether the company have entered into any new markets where trade mark protection is required; whether they have expanded the range of goods and services; whether they have changed the company name; or whether they have acquired any other brands. All of these activities have implications on a company’s trade mark portfolio, and there are a number of actions that can be taken to ensure that the trade mark protection is sufficiently broad to encompass all of a company’s activities.
5. Value Your IP
Finally, in order to maintain an effective company trade mark, it is important that IP is valued within your organisation. A company should be aware of the value of the trade mark and that it is as much of an asset as the building and any other infrastructure, which forms part of the organisation. A recent report by Brand Finance (June 2015) noted that football club Manchester United has a brand value of US$1.206 billion. This figure clearly highlights the importance of careful development and protection of a company trade mark and the potential return where an effective trade mark is developed.
In summary, in order to create an effective trade mark for your company:
- Focus on a specific trade mark for your brand
- Carry out searches to check whether the trade mark is available
- Apply for registration of the trade mark in your main markets
- Police your trade mark online and in the marketplace
- Review your trade mark portfolio annually
- Raise awareness of the value of IP within your organisation and, in particular, the value associated with your trade mark.