Promoting and maintaining a consistent international brand image across all of the institution’s campuses is extremely important, as is the delivery of academic standards and wider social and cultural benefits that accord with those of the originating UK institution. One of the key ways of achieving this goal is to put in place stringent contractual and licensing arrangements although, in practical (legal) terms, the first priority must be to secure exclusive control of the brand at a local level via trade mark registration.
Although many British universities have some degree of registered trade mark protection in the UK and/or European Union, it is more unusual for them to secure corresponding protection in other (often higher-risk) overseas territories where, arguably, trade mark registration is even more important because of a lack of historic presence or substantial reputation.
Where overseas recruitment drives or operations are under consideration, best practice dictates that appropriate trade mark protection is put in place at an early (pre-launch) stage in order to gain full legal control over the brand before it goes live. This also enables the institution to take prompt and effective legal action against potential infringers by way of injunction and/or other local remedies.
Where registration has not been secured, there is an increased risk of the brand being abused or misused which could result in significant loss or damage to the institution, both in financial and reputational terms.
Moreover, in certain territories, such as China, it is not uncommon for unscrupulous individuals or companies to apply for and secure domestic trade mark registrations for well-known Western brands. This practice is particularly prevalent in the fashion and retail sectors and can, at worst, act as a barrier to market entry/use or, at best, result in substantial legal fees being incurred in challenging/cancelling the abusive registration and re-applying for the mark in the name of the legitimate owner.
When addressing the issue of international coverage/protection, the institution will have to consider which countries/regions are immediate, short-medium term and long-term priorities and will need to carefully tailor its trade mark filing strategy accordingly. This may involve:
- making use of domestic priority applications under the Paris Convention to buy time and ease cash flow
- filing a series of local trade mark applications
- using the International trade mark filing system operated by the World Intellectual Property Organisation (WIPO) under the Madrid Protocol where appropriate/available.
In doing so, the institution may also have to consider local cultural perceptions and sensibilities. An example of this would be where the name of the institution has an undesirable meaning in the local language or where the name is associated with a controversial historical figure or event. It is also common and recommended practice to secure registration for both the English language name of the institution and the local language equivalent where different characters/scripts such as Arabic or Mandarin apply.
In doing so, there may be no literal translation for the English name and multiple transliterations differing slightly or significantly in meaning or tone may apply, making it important to select the one that most accurately conveys the institution’s brand message.
In terms of what to protect, institutions should consider registering any distinctive signs or images that belong to, designate or symbolise the institution and/or its values. Such signs may include:
- the institution’s full and abbreviated names (including equivalents in local characters/script)
- its crest/logo/motto/insignia
- any well-known images that are specific to, or associated with the institution (such as an iconic architectural feature).
The scope of the corresponding trade mark applications – in terms of what products and services are covered – will also need to be carefully considered, as this may differ from country to country.
Trade mark registration at home and abroad is an important investment that generates significant practical, commercial and legal benefits. Actively protecting your institution’s brand identity and preventing others from encroaching on your rights and free-riding on your substantial investment should be key considerations when expanding recruitment or operations overseas